The Complainant is Software Koibox S.L., Spain, internally represented.
The Respondent is Rolling Dice Productions, Inc., United States of America, represented by Cylaw Solutions, India. 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, 2021. On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2021, 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 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Response was filed with the Center on May 26, 2021. The Center appointed Warwick A Rothnie as the sole panelist in this matter on June 1, 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 record in this administrative proceeding discloses the following. On November 30, 1999, the Respondent registered the disputed domain name. On December 15, 1999, the Respondent’s principal incorporated a second company, Koibox LLC, in connection with a plan to operate a business making and selling cosmetics. Between 2000 and 2007, the Respondent’s related company, Koibox LLC, used the trademark KOIBOX in relation to a line of nail polish products. This use included promoting and selling its products from a website which the disputed domain name resolved to. On June 8, 2001, Koibox LLC filed an application in the United States Patent and Trademark Office to register KOIBOX as a trademark in respect of cosmetics being nail polish and lip gloss in International Class 3. On January 15, 2002, the application was successfully registered as United States Registered Trademark No. 2,529,849. In January 2008, the registration of the company Koibox LLC was cancelled. On August 17, 2012, the registration of the United States trademark was cancelled. It appears from Internet searches included in the Response that the Complainant was founded in Spain in 2014. It provides software development and related services. From Internet searches included in the Response it appears that the Complainant aims particularly to service beauty salons and hairdressers. On November 27, 2014, the Complainant applied to register as a trademark in Spain “koibox” in relation to computer software design services in International Class 42. This trademark was formally registered on April 13, 2015, Spanish Registered Trademark No. 3,537,657. In July 2015, a representative of the Complainant contacted the Respondent to inquire about the possibility of a transfer of the disputed domain name. This approach led to the Complainant offering the Respondent “up to 200 dollars” for the transfer. The Respondent made a counter-offer seeking USD 2,000. After the Complainant stated its maximum was USD 500, the discussions ceased on July 7, 2015. On July 11, 2019 (that is, four years later), the same representative of the Complainant using the same email account emailed the Respondent to inquire if the disputed domain name was for sale. That approach received a response that the disputed domain name was available for USD 50,000 but the Respondent was open to offers. There does not appear to have been any further dealings between the parties until the Complaint in this administrative proceeding was filed. 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 There is no dispute between the parties that the disputed domain name is identical to the Complainant’s registered trademark (disregarding the generic Top-Level Domain component as a functional element of the domain name system). B. Rights or Legitimate Interests In view of the analysis below, it is unnecessary to consider this element. C. Registered and Used in Bad Faith The Complaint must nonetheless fail. It is well-established that 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 Ltd,WIPO Case No. D2010-0470. As noted above, the Respondent registered the disputed domain name in 1999. So far as the record in this administrative proceeding shows, the Complainant did not even exist until sometime in 2014; at least fourteen years later. There is no suggestion on the record in this case that the Respondent has somehow gained some sort of advanced notice of the Complainant’s plan of the kind addressed in section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. Nor is there any suggestion that “koibox” was the name or trademark of some other entity which the Complainant derives rights from. On the contrary, as the Respondent points out, the Complainant does not address this issue. It merely points to the redirection of the disputed domain name to a social media page, which the Complainant alleges is causing confusion, and the excessive price demanded by the Respondent to transfer the disputed domain name. A demand for an excessive price to transfer a domain name can, in some circumstances, lead to an inference that the disputed domain name was registered in bad faith. Likewise redirection to a social media page. As indicated in the previous paragraph, however, that inference is simply not possible in the present case as the Complainant did not even exist when the Respondent registered the disputed domain name. Nor, so far as the evidence in this proceeding shows, was anyone (let alone anyone from whom the Complainant derives title) using the trademark on which the Complainant relies. In these circumstances, it is simply not possible that the Respondent registered the disputed domain name to take advantage of the (non-existent) Complainant’s (non-existent) trademark rights. Accordingly, the Complainant cannot establish the third requirement under the Policy and so the Complaint must fail. D. Reverse Domain Name Hijacking The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking. Paragraph 15(e) of the Rules provides, in part: “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.” 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”. A finding of reverse domain name hijacking does not result from mere failure of the Complaint. This case, however, is not a case of mere failure where genuinely disputed or unknown facts have led to the Complaint being dismissed. Bearing in mind that the Respondent registered the disputed domain name in 1999 some fourteen years before the Complainant even existed or adopted its trademark, the Complainant should have known the Complaint must fail. Instead, the Complainant filed the Complaint, the substantive text of which consists of five paragraphs without satisfactorily addressing the fundamental requirement of registration in bad faith under the Policy. In these circumstances, the Panel finds that the Complainant has nevertheless engaged in reverse domain name hijacking by using the Policy in a bad faith attempt to deprive the Respondent of the disputed domain name. 6. Decision For the foregoing reasons, the Complaint is denied. In addition, the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Warwick A Rothnie
Sole Panelist
Date: June 14, 2021
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