The Complainant is Gateway Fiber LLC, United States of America (“United States”), represented by Husch Blackwell LLP, United States.
The Respondent is Wix.com Ltd., Wix.com Ltd., United States / Ali Oudah, Ayadi Group, Iraq. 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 2, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 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 June 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 7, 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 June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021. The Center sent a communication to the Parties on July 6, 2021, in which the Center granted the Respondent a five-day period through July 11, 2021, to additionally indicate whether it wishes to participate to this proceeding. The Respondent did not submit any response. The Center appointed John Swinson as the sole panelist in this matter on July 15, 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 is a developer of fiber-to-the-home broadband networks in Missouri, United States. The Complainant was founded in May 2019. The Complainant’s website is located at “www.gatewayfiber.com” and was created in 2018. The Complainant has a pending United States Trademark Application Serial No. 90747540 for GATEWAYFIBER (all in lower case with a design element to the left of the letters). This application was filed on June 1, 2021, and is pending. According to searches conducted by the Panel, the Respondent is a property developer based in Egypt that develops property in Baghdad. The disputed domain name was registered on August 5, 2020. The website at the disputed domain name advertises fiber-to-the-home Internet connection services. This website appears to be under construction, because some of the wording is template placeholder wording. This website also displays the Complainant’s previous logo and tag line, and also links to the Complainant’s Internet speed test page. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions: The Complainant is a leading developer of fiber-to-the-home broadband networks in Missouri and in particular, the following areas: Truesdale, St.Charles, Wentzville, Warrenton, Wright City, Winfield, Troy, Hawk Point, Old Monroe, and Moscow Mills. The Complainant owns the rights in and to the GATEWAY FIBER mark, including U.S. Application Serial Number 90747540 therefor to identify and promote iInternet service provider and related services. The Complainant has used its GATEWAY FIBER mark in the United States since at least as early as May 20, 2019, which well predates the Respondent’s registration of the disputed domain name. Until March 2021, the Complainant used a logo that included the words GATEWAY FIBER and the tagline “smart home smart life” along with design elements. The website at the disputed domain name has this identical logo in a similar position on the website to where the Complainant placed the same logo. Other design and textual elements from the Complainant’s website are also included on the website at the disputed domain name. Since its inception, the Complainant has invested considerable money and effort to develop its GATEWAY FIBER trademark into the strong indicator of the origin of its ISP services that they are today. As a result of such extensive and exclusive use of the GATEWAY FIBER trademark in connection with its ISP services, consumers have come to identify such services solely with the Complainant. The fact that the Respondent has been targeting the Complainant and slavishly copying its GATEWAY FIBER mark and logo is clear evidence that the Complainant’s trademark has achieved significance as a source identifier. The disputed domain name wholly incorporates the Complainant’s GATEWAY FIBER trademark, albeit the addition of a hyphen between the terms GATEWAY and FIBER. It is well-established that adding such a common symbol is insufficient to distinguish the disputed domain name from the Complainant’s trademark. Previous UDRP panels have generally found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. The Complainant has no relationship with the Respondent, and the Complainant has never given the Respondent any license, permission, or authorization to use its GATEWAY FIBER trademark in any way or for any purpose. The website associated with the disputed domain name has no reference to the term “gateway,” descriptive or otherwise, and thus the Respondent’s combination of this term with the term “fiber” can be no mere coincidence but rather the Respondent’s illegitimate attempts to mimic the Complainant. The Complainant suspects that the website associated with this disputed domain name is a sham. When one clicks on the “Why Choose Gateway Fiber” tab, five reasons are given, three of which are nonsensical placeholder text. Previous UDRP panels have consistently found bad faith where the respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name. The Respondent used the disputed domain name in direct competition with the Complainant to purportedly offer services identical to the Complainant’s services. Clearly, such actions are to disrupt the Complainant’s business. There is nothing in the WhoIs record to suggest any good faith basis for the Respondent to use GATEWAY FIBER other than to trade off the goodwill of the Complainant’s GATEWAY FIBER trademark, and the Respondent’s wholesale copying of the Complainant’s logo and tag line, let alone its reference to one of the Complainant’s Missouri locations on the Respondent’s website, confirms such a conclusion. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response. 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 Complainant’s United States trademark application for GATEWAYFIBER is pending at the date of this decision. A pending trademark application does not by itself establish trademark rights within the meaning of paragraph 4(a)(i) of the Policy. Accordingly, as is appropriate in these circumstances, the Complainant relies unregistered trademark rights. To establish common law or unregistered trademark rights for purposes of the Policy, the Complainant must show that its trademark has become a distinctive identifier, which consumers associate with the Complainant’s services. See for example Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,WIPO Case No. D2020-2773; and L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global,WIPO Case No. D2021-0962. Even though the Complainant is a relatively new business, the Complainant has stated that, in respect of the field in which the Complainant operates, the Complainant has rights in the GATEWAY FIBER trademark for the purposes of the Policy. The Respondent did not dispute this. The Panel has reviewed the Complainant’s website (created in 2018) and agrees with the Complainant in this regard. The fact that the Respondent is clearly targeting the Complainant’s GATEWAY FIBER trademark (as discussed below) supports the Complainant’s assertion that its trademark has achieved significance as a source identifier for the purposes of the Policy. See section 1.3 and 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”). The disputed domain name includes the Complainant’s trademark GATEWAY FIBER in its entirety. The only difference is that there is a hyphen between the terms “gateway” and “fiber”. This addition of the hyphen does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s GATEWAY FIBER trademark under the Policy. The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s GATEWAY FIBER trademark, disregarding the generic Top-Level Domain (“gTLD”) “.com”. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. 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. Previous UDRP 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 sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case. The Complainant states that the Complainant has not licensed or given the Respondent permission to use the Complainant’s trademark. The Complainant states that it has no legal relationship with the Respondent. There is no evidence that the Respondent supposedly/possibly an Egyptian real estate developer, is commonly known as GATEWAY FIBER. The question arises as to whether there is bona fide use of the disputed domain name by the Respondent. The Complainant states that there is no bona fide use. This is because the Respondent has copied the Complainant’s logo and tagline on the website at the disputed domain name. That website also links to the Complainant’s Internet speed test page and includes text that appears to be placeholder text (e.g. “I'm a paragraph. Click here to add your own text and edit me. It’s easy. Just click “Edit Text” or double click me to add your own content and make changes to the font. I’m a great place for you to tell a story and let your users know a little more about you.”). This evidence suggests that the Respondent is not actually providing services, or if it is, that the use of GATEWAY FIBER by the Respondent is not bona fide. In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. In the present circumstances, the fact that the disputed domain name resolved to a website which copies the Complainant’s logo and branding leads the Panel to conclude the registration and use of the disputed domain name are in bad faith. The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. By registering the disputed domain name and then by using the disputed domain name to, in effect, impersonate the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant. The use of a logo in the masthead of the Respondent’s website, which is the same as the Complainant's logo, in respect of similar services to those offered by the Complainant, is misleading. The Respondent’s website site is likely to be confused for a website belonging to or connected with the Complainant and its services. Compare Solstice Marketing Corporation v. Solsticesunglasses-Discount-Shop-Sale.com,WIPO Case No. D2017-1919. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the web site under paragraph 4(b)(iv) of the Policy. This also could disrupt the business of the Complainant and may constitute bad faith under paragraph 4(b)(iii) of the Policy. The Panel finds that the Complainant succeeds on the third element of the Policy in relation to the disputed domain name 7. 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 John Swinson
Sole Panelist
Date: July 29, 2021
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