The Complainant is Green Globe Limited, United Kingdom, represented by SoCal IP Law Group LLP, United States of America.
The Respondent is Domains By Proxy, LLC, United States of America / Green Globe LLC, United States of America, represented by Law Office of Catherine Anne Allen, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 July 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and to provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint. The Complainant filed an amended Complaint on July 18, 2020, removing four other domain names included in the initial Complaint. On July 29, 2020, the Complainant submitted an amendment to the Complaint in response to the Center’s request for confirmation sent the same day. 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 July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. Several email communications were received from the Respondent on July 14, 2020 and August 4, 5, 11, 12 and 17, 2020, including also the Respondent’s request for extension of time. Accordingly, the Center in accordance with paragraph 5(e) of the Rules, exceptionally granted the extension of time until August 29, 2020. The Response was filed with the Center on August 28, 2020. On September 2, 2020, the Center received the Complainant’s supplemental filing in response to which the Respondent submitted a supplemental filing on September 3, 2020. The Center appointed Adam Taylor as the sole panelist in this matter on September 7, 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. The Respondent submitted a second supplemental filing on September 16, 2020. 4. Factual Background The Complainant provides sustainability certification services and owns a number of registered trade marks for GREEN GLOBE including: - Australian figurative trade mark no. 817289, filed December 14, 1999, registered June 20, 2001, in classes 16, 35, 39, 41, and 42; and - European Union word Trade Mark no. 2777910, filed July 16, 2002, registered January 14, 2004, in classes 39, 41, and 42. The disputed domain name bears a “creation date” of March 9, 1997. The Respondent acquired the disputed domain name on an unspecified date in 2010. (At this point, it is relevant to point out that the relationship between the named Respondent and another company, Green Certifications, Inc, (“GCI”) is a point of contention in this proceeding and indeed the Response is filed on behalf of GCI. For convenience, and for reasons explained below, the Panel treats both entities interchangeably as “the Respondent” except where it is necessary to refer to them separately.) On March 18, 2011, the Complainant granted a non-exclusive 10-year licence to GCI (“the First Licence”) to use and sub-license the brand “Green Globe” and various registered trade marks of the Complainant in connection with “sustainability certification services and certification relating to travel and tourism …”. On January 1, 2013, in consideration of payment of USD 50,000, the Complainant granted a similar licence, but this time for 20 years, to “Green Globe Certification” (“the Second Licence”). It is not in dispute that “Green Globe Certification” refers to GCI. The First Licence and the Second Licence are collectively referred to below as “the Licence”. The Respondent has used the disputed domain name for a website providing information about the Respondent’s certification services. The homepage is branded with the Complainant’s “Green Globe” logo plus the heading: “Green Globe = 3S. Safety : Security : Sustainability”, followed by this introductory statement: “Green Globe certified hotels, resorts, conference centers and attractions are the safest and most secure tourism businesses around the world”. The following statement appears in the footer: “The Green Globe brand is used under a licence from Green Globe Ltd. The Green Globe Standard ([i]ncl all criteria and indicators), domains, trainings [sic] tools and all other related IP is owned entirely by Green Certifications Inc.” On June 22, 2020, GCI filed a Complaint in the Los Angeles Superior Court against the Complainant (“the US Case”). In those proceedings, the Respondent alleges that the Complainant is engaging in “an extortionate, revenge campaign” to gain leverage against the Respondent including by holding its social media accounts hostage and by filing this UDRP proceeding notwithstanding the terms of the Second Licence. The Respondent sought, amongst other things, an injunction stopping the Complainant from interfering with the GCI’s online or social media presence. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions: The Complainant is the sole and exclusive owner of the “Green Globe” trade mark for providing certification of certain practices and licensing its trade mark to businesses that provide vacation destinations worldwide. Because of the Complainant’s considerable global business and marketing activities, the Complainant has developed substantial goodwill and reputation in its mark throughout the world. The Complainant owns common law rights in the name “Green Globe” and associated logo. The disputed domain name is identical to the Complainant’s trade marks. The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not, and has never been, a licensee of the Complainant’s trade marks. There is no active entity in California called “Green Globe, LLC”. Companies of that name incorporated in 2010 and 2017 were suspended. Accordingly, there is no properly identified legal respondent. The disputed domain name was registered and is being used in bad faith. The Respondent registered and/or renewed the disputed domain name to intentionally block the Complainant and/or to create a likelihood of confusion with the Complainant’s marks for commercial gain The Complainant’s website uses the Complainant’s name and logo, which are both registered trade marks, and for the same services that are covered by the Complainant’s registered trade marks. The Respondent must have registered the disputed domain name with actual knowledge of the Complainant’s trade mark rights because the Complainant’s mark has been known worldwide in its particular industry for some 20 years. The Respondent’s failure to provide accurate registrant information to the Registrar and/or to keep it up to date is further evidence of bad faith. This is also grounds for cancellation of the disputed domain name under ICANN’s Registrar Accreditation Agreement. B. Respondent The following is a summary of the Respondent’s contentions: The Respondent possesses rights or legitimate interests in the disputed domain name. The Respondent, “Green Certifications, named in the Complaint as Green Globe LLC”, is a leader in the travel and tourism sustainability certification industry, providing certification, trading and education services in over 80 countries. In 2008, the Respondent registered the trading name “Green Globe Certification”. The Respondent bought the disputed domain name in 2010 from a Dutch flower shop called “Green Globe LLC”, which is now no longer trading. The Respondent has used the disputed domain name for a bona fide offering of services for almost a decade and is known worldwide by the name “Green Globe Certification”. The Respondent is operating the disputed domain name under the Second Licence, as stated in the footer of the Respondent’s website and in the signature block of its emails. The Second Licence permits use of the disputed domain name to supply the services offered by the Respondent. Receipts for registration and renewal of the disputed domain name show that GCI is the owner of the disputed domain name. The Respondent repeatedly informed the Registrar that the WhoIs for the disputed domain name needed to be updated but the Registrar said this was unnecessary since the owner of the disputed domain name was the entity that renewed it annually - GCI. Since at least 2011, the Complainant has been aware that the Respondent has used the disputed domain name and the names “Green Globe” and “Green Globe Certification” and that it was a party to the Licence. The Complainant has undertaken a campaign to harass the Respondent and hijack its websites, seeking removal of the Respondent from various social media and Internet platforms without mentioning the Second Licence, including by means of this proceeding. By filing this Complaint, the Complainant is attempting to impede the Respondent’s rights, in breach of the Second Licence. The Complainant has provided no evidence that the Respondent registered or used in the disputed domain name in bad faith. On the contrary, the Respondent’s evidence shows that the disputed domain name was registered and used in good faith, in accordance with the Licence. The Complaint constitutes Reverse Domain Name Hijacking. The Complainant has filed this Complaint in bad faith in that it did so with knowledge of the Respondent’s rights including under the Licence. The Complaint should be denied on the grounds that it encroaches on matters upon which the Los Angeles County Superior Court (“the US Court”) will have to adjudicate in the US Case including interpretation of the Second Licence. Further, the matters raised exceed the relatively limited “cybersquatting” purpose of the UDRP. C. Complainant’s Supplemental Filing The following is a summary of the contentions in the Complainant’s supplementary filing: There is no properly-identified respondent in the Response, which contains multiple conflicting and unsupported assertions about who the true Respondent may be, relating to (1) the alleged acquisition of the disputed domain name from the Dutch flower shop and (2) the allegation that GCI is the owner of the disputed domain name. The Complainant never licensed its trade marks to Green Globe, LLC, the registrant of the disputed domain name, and the Licence is therefore not pertinent to the Complaint. The disputed domain name was added to the US Case after this Complaint was filed in order to interfere with this UDRP action and this aspect of the US Case should therefore be disregarded. 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 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 Complainant claims that its supplemental filing is necessary because the Complainant could not reasonably have anticipated that that the Response would claim that the Respondent is not the registrant of the disputed domain name but another entity. The Panel disagrees. For reasons explained below, the Panel considers that it was obvious that the Respondent would seek to connect the registrant of the disputed domain name with GCI and/or to invoke the Licence granted to GCI. In the Panel’s view, the Complainant could, and indeed should, have addressed these issues in the Complaint. However, the Panel has nonetheless decided to admit the filing on the grounds that it wishes to know the Complainant’s position vis-à-vis the Licence. Furthermore, the filing is short and to the point. The Panel declines to admit the Respondent’s first supplemental filing as it adds nothing of substance, simply objecting to the Complainant’s filing and referring back to its Response. The Panel also declines to admit the Respondent’s second supplemental filings on the grounds that it consists of material that either duplicates the Response or could have been included in the Response. B. Court Proceedings The Respondent has requested that the Complaint be denied on the grounds that it encroaches on the matters to be addressed by the US Court. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. However, panels are generally reluctant to terminate UDRP cases due to concurrent court proceedings. See section 4.14.2 of the WIPO Overview 3.0. The Respondent has not convinced the Panel that this proceeding will encroach on the court case. It is neither the role nor the intention of the Panel to engage in a detailed interpretation of the Second Licence or to assess whether it has been breached. Furthermore, the decision of the Panel is not binding on the court. As explained in section 4.14 of the WIPO Overview 3.0, paragraph 4(k) of the Policy preserves parties’ court options before, during, and after a UDRP proceeding. Accordingly, the Panel does not propose to terminate this proceeding in light of the US Case. C. Identical or Confusingly Similar The Complainant has established rights in the mark “Green Globe” by virtue of its registered trade marks and the disputed domain name is identical 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. D. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. The Respondent claims that the Licence constitutes rights or legitimate interests in the disputed domain name. In its supplemental filing – not having addressed the issue in its Complaint – the Complainant does not deny the existence of the Licence; it simply asserts that the Licence is not pertinent because the registrant of the disputed domain name, namely Green Globe LLC, is not the licensee named in the Licence. The Panel agrees with the Complainant that the Respondent has not clearly explained or evidenced the connection between GCI and Green Globe LLC. The Response is filed on behalf “GREEN CERTIFICATIONS INC. [n]amed as GREEN GLOBE LLC”, with no clarification of what this statement actually means. The Respondent says that it bought the disputed domain name in 2010 from a now-defunct Dutch flower shop called “Green Globe LLC”, thereby implying that the registrant name in the WhoIs is actually that of the previous owner. The Respondent also claims that various renewal invoices addressed to GCI indicate that this entity is “the owner” of the disputed domain name. As the Complainant observes, the Respondent has provided no evidence in connection with the alleged acquisition from the Dutch flower shop. Nor has the Respondent denied any connection with either of two suspended California entities referred to in the Complaint that were incorporated in 2010 and 2017 respectively. However, while the exact status of Green Globe LLC is somewhat vague, it is nonetheless reasonably clear that GCI, the licensee named in the Licence, is either the ultimate controller of the disputed domain name or at least closely associated with such controller. The Complainant’s own screenshot of the website at the disputed domain name includes a statement in the footer that the “Green Globe brand” is used under licence from the Complainant and, also, that all intellectual property rights are owned by the GCI – thus indicating that GCI is the entity that actually operates the site. Furthermore, the Complainant has not denied the Respondent’s assertion that GCI has used the disputed domain name for a decade or so for the kinds of services covered by the Licence. In light of this, and the fact that GCI appears to have paid to renew the disputed domain name since at least 2013, the Panel considers that, for the purposes of this limited proceeding, the Respondent has established a sufficient nexus between Green Globe LLC (notwithstanding the lack of clarity regarding its status) and GCI. The Panel would add that, for varying reasons, domain names are often registered in the names of web developers, attorneys, privacy services and other agents or entities related to the “real” owner, rather than the owner itself. In such circumstances, panels will generally look behind the official registrant to the rights and legitimate interests claimed on the part of the ultimate owner, notwithstanding that the owner’s name does not appear in the registrant field of the disputed domain name. Furthermore, the Panel notes that the Complaint was initially filed “against Registration Private, Domains By Proxy, LLC” in connection with five domain names, arguing that GCI was the likely registrant of the two domain names for which the true registrant was hidden (including the disputed domain name). Under the second element, the initial Complaint stated, “[the] Complainant has no current licenses of its trademarks to GREEN CERTIFICATIONS, INC.” Accordingly, at that point the Complainant clearly thought that GCI controlled the disputed domain name. After the Center notified the parties of the information disclosed by the Registrar regarding the identity of the underlying registrant(s) behind the privacy service, the Complainant amended the Complaint, removing four of the domain names from the proceeding and naming as the Respondent the Registrar’s confirmed registrant for the disputed domain name (i.e. Green Globe LLC), removing the reference to GCI. Instead, as discussed in section 6F below, the Complainant should have disclosed and addressed the Licence in its Complaint - especially considering that the original Complaint was filed against GCI, and that the screenshots of the website at the disputed domain name referred to the Licence - beyond the mere general denial, which appears questionable in light of the existence of the Licence: “[the] Complainant has no current licenses of its trademarks to GREEN CERTIFICATIONS, INC.” As explained in section 6B above, the Panel makes no finding regarding interpretation or breach of the Licence. Those are matters for the US court. The position of the Panel is simply that, on the basis of the record before it, the Panel considers that, on balance, the Respondent has a sufficient connection with the Licence such that it should be able to rely on it for the purposes of the second element of the UDRP. The Panel finds that the Complainant has not proven the Respondent’s lack of rights or legitimate interests, given the facts placed before the Panel in relation to the Licence and the circumstances surrounding the Respondent’s long-standing use of the disputed domain name. For the above reasons, the Panel concludes that the Complainant has failed to establish the second element of paragraph 4(a) of the Policy. E. Registered and Used in Bad Faith It is unnecessary to consider this element in light of the Panel’s finding under the second element above. F. 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”. See examples of the reasons articulated by panels for finding RDNH at section 4.16 of the WIPO Overview 3.0 , including at item (v): “the provision of intentionally incomplete material evidence – often clarified by the respondent”. In this case, it was legitimate for the Complainant to advance the argument – albeit a highly technical and tenuous one in the Panel’s view for reasons explained above – that the Licence was not pertinent to the second element because the registrant of the disputed domain name was not the entity named in the Licence. And the Complainant did indeed argue this point in its supplemental filing, but only after the Respondent had drawn attention to the Licence in its Response. However, the Complainant should have disclosed the Licence and addressed the issue in its Complaint. Not only did it fail to do so, in the initial version of its Complaint, the Complainant even denied the existence of a licence with GCI, despite now apparently not disputing the fact of the Licence. The Complainant cannot have been in any doubt about the potential relevance of the Licence, not least because the Complainant initially asserted that GCI, the other party to the Licence, was the likely registrant of the disputed domain name and because the Complainant’s own screenshot of the website at the disputed domain name included a reference, albeit subtle, to the site being operated under that Licence. Furthermore, as mentioned above, the Complainant has not disputed the Respondent’s assertion that it was aware that GCI had used the website at the disputed domain name for a decade or so in connection with the Licence. Instead, in the amended version of its Complaint, the Complainant proceeded as if the disputed domain name was being operated by an entirely independent entity that had allegedly registered and used the disputed domain name to illicitly target the Complainant’s rights. Indeed, on the face of it and without the context of the Licence, the Respondent’s conduct seemed particularly egregious as the website included a reproduction of the Complainant’s logo. If the Respondent had not filed a Response, the Panel would be considering a very different case. The Response has proved essential in revealing the real nature of this dispute. For the above reasons, the Panel considers that the Complainant has engaged in RDNH. 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor
Sole Panelist
Date: September 24, 2020
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