The Complainant is Jose Nobio d/b/a JIXHOST c/o John Berryhill, Ph.d., Esq., United States of America (“Unites States”).
The Respondent is Faris Maliki, hloun.com, Saudi Arabia. 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 9, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that: (a) it is the Registrar for the disputed domain name; (b) the Respondent is listed as the registrant and providing the contact details; and (c) the language of the registration agreement is English. 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 July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on August 16, 2021. On August 16, 2021, the Respondent sent two informal email communications. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 27, 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 operates a webhosting service. He has been doing so under the name “Jix Host” since at least 2009 (although between 2012 and 2014 the business was operated through a company the Complainant controlled, Jix Host Inc.). From its inception, the Complainant (or his company) carried on the business through a website to which the disputed domain name resolved. Since at least March 2010, the website featured a prominent trademark “JixHost” superimposed over a star. In August 2020, unbeknownst to the Complainant, the registration of the disputed domain name was hijacked. However, it was left with the registrar the Complainant had dealt with, Wild West Domains, and continued to point to the Complainant’s website. That is, as shown in the domain name history in Exhibit F to the Complaint, on or about August 27 2020, the registrant and contact details was changed without the Complainant’s authorization from its privacy protection status to “Jixhost.com” in Saudi Arabia. The nameservers, however, continued to point to those of the Complainant’s website. On October 27, 2020 (that is, 60 days after the initial change of registrant details), the disputed domain name was moved to a new registrar – the Registrar – and there was also a change in the webhost. Subsequently, the Respondent became, or was revealed, as the registrant. When this happened, the Complainant noticed a brief outage in his website and, when it reactivated, it came online as an older, back-up copy. This was not uploaded by the Complainant or on the Complainant’s instructions, however, and was not under his control. It was at this point that the Complainant discovered the registration of the disputed domain name had been transferred (without his permission) to, it appears, the Respondent. Also at this time, the Complainant discovered an attempt was being made to transfer the registration of another of his domain names. He was able to thwart that attempt. The Complainant was also able to email his customers for his “Jix Host” webhosting service from the alternative account and direct them to deal with him through the alternative account. 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. In the emails received by the Center from the Respondent after the date the Response was due, the Respondent purports not to understand that a Complaint about his registration and use of the disputed domain name has been brought and claims he does not understand what is happening. The emails, however, are written in clear, grammatical English. The Notification of Dispute and the Complaint and annexes have been sent to the addresses confirmed as correct by the Registrar and, as the Respondent’s emails confirm, received by the Respondent. In these circumstances, the Panel finds that the Respondent has been given fair notice of the Complaint against him and a reasonable opportunity to seek such advice as the Respondent is minded to seek and to put his case. Accordingly, 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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has demonstrated that he has been using the name and unregistered trademark “Jix Host” since at least 2010. In the circumstances of this case, the Panel considers the Complainant has established sufficient to find he has trademark rights in “Jix Host” as an unregistered trademark under the Policy. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level-Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Insofar as the Complainant’s unregistered trademark was depicted superimposed on a star, it is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. That is appropriate in this case as the verbal elements of the trademark are not overborne by the device element and are the key distinguishing feature. See for example, WIPO Overview 3.0, section 1.10. Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. 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. 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 usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. These matters go a considerable way to establishing the required prima facie case. Further, it is not clear how the Respondent has obtained the registration of the disputed domain name from the Complainant. As noted above, however, the Complainant contends the registration of the disputed domain name was transferred from it without its knowledge or permission; in effect, a form of theft. Thus, according to the Complainant, this is a case of domain name laundering. When the registrant of a domain name is changed, the Complainant contends that ICANN’s Transfer Policy requires the registration to remain locked for 60 days following the transfer. To circumvent this constraint, a cunning hijacker may leave the domain name pointing to the genuine website during this period in the hope that the original registrant will not check the details of the registration so that, when the 60 days have expired, the hijacker can transfer the domain name freely to a different registrar and potentially, in due course, to another registrant. This practice has been recognised in a number of prior decisions. See e.g. CIN - Corporação Industrial do Norte, S.A. v. Huhan, Yuming Zhong,WIPO Case No. D2014-1865. The Respondent has not disputed these claims or otherwise sought to explain how the disputed domain name came to be registered in his name. On the basis that the disputed domain name has been transferred away from the Complainant without its permission, therefore, it appears to involve as the Complainant contends theft or illegal activity. That conduct cannot be the foundation of a claim to a right or legitimate interest in the disputed domain name. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, 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 LtdWIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The way in which the registration of the disputed domain name was obtained indicates knowledge of the Complainant and its trademark. Its continued resolution to an unauthorised and older version of the Complainant’s website (only changing the billing information at the website) confirms that. The use of the disputed domain name to resolve to an unauthorised website using the Complainant’s name and trademark and purporting to offer services of the kind offered by the Complainant but not associated with the Complainant is use in bad faith. In circumstances where the Respondent has not sought to claim, let alone establish, that he has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
Sole Panelist
Date: September 10, 2021
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