The Complainant is DFO Global Performance Commerce Limited, Canada, represented internally.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Sia Zhou, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2021, 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 March 3, 2021 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 March 8, 2021. 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 March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. The Respondent contacted the Center on March 15, 2021, but did not submit a formal response. Accordingly, the Center notified the Commencement of Panel Appointment on April 23, 2021. The Center appointed Antony Gold as the sole panelist in this matter on April 29, 2021. 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 provides services to companies intended to assist them with sales enhancement through the use of improved ecommerce services, search engine optimization and other techniques. Its website at “www.dfo.global” is branded as “DFO GLOBAL” and contains the question “Looking for More Sales and Revenue?” as well as the strapline “Become the Brand that Sells Anywhere”. Visitors to the website who want to sell their products and services globally are invited to contact the Complainant. The Complainant is the owner of United States service mark, registration number 5839134, for DFO GLOBAL PERFORMANCE COMMERCE, registered on August 20, 2019 in classes 35 and 41. The disputed domain name was registered on December 6, 2020. According to the evidence submitted with the Complaint, it resolved to a website which comprised an article dated December 2020, headed “Insanely Cool Gadgets To Start 2021 The Right Way”. Each product review also featured links enabling the user to find out more information and/or to click through to a website from which the product could be purchased. At the foot of the website there was a series of statements and disclaimers, including; “DFOcommerce is an independent service that is supported by advertising” and “The offers that appear in this article are from companies which DFOcommerce receives compensation”. The disputed domain name does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its trade mark for DFO GLOBAL PERFORMANCE COMMERCE and says that the disputed domain name consists of the dominant elements DFO and COMMERCE and that it is likely to be confused with the Complainant’s trade mark. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant nor is it otherwise authorized by the Complainant to use its trade mark, nor is the Respondent commonly known by the disputed domain name. The Respondent’s “About Us”, “Privacy Policy” and “Terms and Conditions” pages are not working. Moreover, the Respondent does not use, and has not made preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The Respondent’s website merely features a list of third party products that compete with those of the Complainant and/or its affiliates. For example, the Respondent’s webpage contains a feature about an adhesive called “Bondic”. This competes with a product sold by one of the Complainant’s affiliates called “Spectroseal”. Similarly, the Respondent’s “ThePhotoStick” product competes with a product sold by one of the Complainant’s affiliates called “Infinitikloud”, which has similar functionality. There are several other examples. For these reasons it is very probable that an Internet user might be misled into thinking that the Respondent’s web page is related to, or even operated by, the Complainant. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent registered and is using the disputed domain name to profit from and exploit the Complainant’s DFO GLOBAL PERFORMANCE COMMERCE service mark by misdirecting users to its own website. The Complainant has extensively advertised, promoted and/or offered its services on the Internet via its official website. As a result of the Complainant’s use of its domain name in promoting, advertising and/or offering the Complainant’s services and its affiliates’ goods, persons encountering domain names which contain the Complainant’s mark will believe that the corresponding website is the Complainant’s website or that it is otherwise authorized by, or affiliated with, the Complainant. The Respondent has been using the disputed domain name in order intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of its website. This comprises bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Respondent has been passing off its goods and/or services as those of the Complainant, who has already established goodwill, not only for its similar services but also for its affiliates’ similar goods. Furthermore, the very nature of the Respondent’s registration evidences bad faith. The Respondent knowingly registered the disputed domain name in order to capitalize on consumer recognition of the Complainant’s mark. The bad faith allegations combined with the Respondent’s lack of interest or rights in the disputed domain name should lead the Panel to the inevitable conclusion that there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name. B. Respondent The Respondent did not provide a substantive response to the Complainant’s contentions but, on March 15, 2021, it sent an email to the Center in the following terms; “thanks for all your email, actually I don’t know what happened and I don’t know the DFO company before. All the links in my website have nothing to do with the DFO company If you think my domain should be give to them, please go ahead”. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar The Complainant has provided details of the registered service mark it owns for DFO GLOBAL PERFORMANCE COMMERCE, including the mark in respect of which details are set out above. It has thereby established its rights in it. For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s service marks, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name includes the “DFO” and “COMMERCE” elements of the Complainant’s mark, but lacks the “GLOBAL” and “PERFORMANCE” components. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that: “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The omission from the disputed domain name of two of the four words which comprise the Complainant’s mark, that is “global” and “performance” is noted when considering the test for confusing similarity. However, the first term in both the mark and the disputed domain name, namely “DFO”, has distinctive character and the disputed domain name also includes the final word in the Complainant’s mark, namely “COMMERCE”. On this basis, the Panel concludes, on balance, that the Complainant’s trade mark is sufficiently recognizable within the disputed name and that it is accordingly confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that: (i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or (iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. How these provisions are usually applied in practice is explained at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. The second and third circumstances outlined at paragraph 4(c) of the Policy can be dealt with briefly; there is no evidence to suggest that the Respondent has been currently known by the disputed domain name and the use it was making of the disputed domain name, whilst it was active, was commercial in nature. So far as the first circumstance is concerned, there is nothing inherently objectionable in the creation by the Respondent of a webpage containing a series of product reviews and associated links from which the Respondent derives income, provided the disputed domain name and indeed the hosted links do not compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users; see section 2.9 of the WIPO Overview 3.0 and, by way of example, Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363. The determining factor is whether the available evidence suggests that the Respondent registered the disputed domain name because it was aware of the Complainant, and hoped that the confusing similarity between the disputed domain name and the Complainant’s mark might increase the volume of Internet traffic to its website. Targeting of the Complainant by the Respondent in this manner will prevent its website from being considered a bona fide offering of goods and services. There are aspects of the Complainant’s case in this respect which are difficult to follow. In particular, the Complainant has asserted that the Respondent’s website does not comprise a bona fide offering of goods and services because each of the products advertised for sale on it takes aim at, and is intended to compete with, a corresponding product which is promoted by one of the Complainant’s affiliates. However, there is no suggestion by the Complainant that its own website directly advertises, or otherwise promotes, the products of the affiliates with which it works or, even that a list of its affiliates is posted on its website. With this in mind, the Complaint contains no specific explanation as to how the Respondent might have divined the names of the affiliates with which the Complainant worked in order that it could then post an article which contained features about products which competed with them. It is noteworthy that, for many of the products reviewed by the Respondent, the Complainant has been able to produce details of an affiliate offering for sale a similar product. But without more information as to number and nature of the affiliates with which the Complainant works and, at least, some explanation from the Complainant as to how the Respondent might have obtained their details, the information provided about the affiliates’ similar products does not, in itself, demonstrate targeting by the Respondent of the Complainant’s business. However, the Respondent’s brief response to the Center is unsatisfactory in that, whilst denying knowledge of the Complainant and its activities, it fails to put forward a positive case as to why it chose to register the disputed domain name. As the Respondent’s knowledge, or otherwise, of the Complainant is likely to be determinative of the Complaint, the Panel has considered it material to conduct Internet searches in order to obtain information as to the extent to which the relevant elements of the Complainant’s mark are specifically associated with its online presence. The circumstances in which a panel might make some brief factual enquiries are outlined at section 4.8 of the WIPO Overview 3.0; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision…”. The Panel has accordingly conducted two searches on Google; the first search being for the words “DFO” and “COMMERCE” and a second search being for the Complainant’s full mark, DFO GLOBAL PERFORMANCE COMMERCE. The top-ranked result produced by the first search is for the Complainant’s website at “www.dfo.global”, suggesting that the two search terms, in combination, are strongly associated online with the Complainant. The second result establishes that, whilst the Complainant’s website currently promotes its services primarily under the brand “DFO Global” it has previously promoted its services extensively under its full trade mark. Finally, the Panel has also established that the disputed domain name no longer resolves to an active website. In these circumstances, the Panel is satisfied, on balance, that there is a prima facie case that the Respondent was aware of the Complainant and sought to target it by its registration of the disputed domain name. The burden of production accordingly shifts to the Respondent to show that this was not the case. The Respondent’s brief assertion, namely; “I don’t know what happened and I don’t know the DFO company before”, is insufficient to rebut this burden. Accordingly, whilst the Panel does not find overly compelling evidential support for accepting the Complainant’s contentions that the article published on the Respondent’s website specifically targeted its affiliates, it finds, on a balance of probabilities, that the disputed domain name was selected by the Respondent with knowledge of the Complainant and its mark and in order to increase Internet traffic to its website. Neither use of the disputed domain name for these purposes, nor its currently inactive status, comprises a bona fide offering of goods and services. The Panel therefore finds that the Respondent lacks rights or a legitimate interest with respect to the disputed domain name. C. Registered and Used in Bad Faith As the Panel has explained in its findings in relation to the second element, the likelihood, on balance, is that the Respondent was aware of the Complainant as at the date of its registration of the disputed domain name and that it registered the disputed domain name in order to take advantage of the Complainant’s reputation in its mark. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith.” The Panel similarly finds the Respondent’s registration of the disputed domain name to have been in bad faith. So far as bad faith use is concerned, the only known use to which the disputed domain name has been put is to host the product review article containing income-generating links, described in greater detail above. Such web pages are permissible where, for example, the domain name in issue consists of a dictionary word or phrase and is used to host pay-per-click links, which relate to that word or phrase; see section 2.9 of the WIPO Overview 3.0. However, it has been well established in previous decisions under the Policy that such conduct can, in other circumstances, amount to bad faith use. See, for example, Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491, in which the panel explained that “[…] the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name[s] resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”. Similarly, for the period during which the disputed domain name was in active use, Internet users who visited the Respondent’s website, having assumed, from its confusing similarity with the Complainant’s mark that it had some connection with the Complainant, may ultimately realize their mistake. However, the Respondent would by then have had the opportunity to seek to derive financial benefit from their visit noting the previous use of the disputed domain name. Such conduct falls within the circumstance of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Finally, the currently inactive status of the disputed domain name amounts to bad faith use under the doctrine of passive holding; see section 3.3 of the WIPO Overview 3.0; in this respect the Panel takes into account, in particular, the failure of the Respondent to provide an explanation as to the reasons for its registration of the disputed domain name, its use of a privacy service to conceal its identity, the relative distinctiveness of the Complainant’s mark and the implausibility of any good faith use to which the disputed domain name could be put. The Panel accordingly finds the disputed domain name to have been registered and used in bad faith. 7. Decision For the foregoing reasons, the Panel orders that the disputed domain name Antony Gold
Sole Panelist
Date: May 24, 2021
Full & Egal Universal Law Academy