The Complainant is SkyCell AG, Switzerland, internally represented.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Joubin Safai, United States of America (the “United States”), represented by Lewis & Lin, LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 August 9, 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 amendment to the Complaint on August 12, 2021, limited to adding the Registrar-disclosed registrant to the Complaint.
The Center verified that the Complaint together with the amendment to 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 August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. On August 17, 2021, the Complainant communicated an offer to buy the disputed domain name from the Respondent, which was copied to the Center. The Respondent did not respond to that offer and instead filed his Response with the Center on September 2, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 13, 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 BackgroundThe Complainant is a company registered in Switzerland. It is a provider of hybrid containers for the pharmaceutical industry and related services.
The Complainant is the owner of various trademark registrations for the mark SKYCELL. The earliest of these is Switzerland trademark registration number 653671 for the word mark SKYCELL, registered on January 22, 2014, with a filing date of November 4, 2013, in International Classes 6, 20, 39, and 42. The Complainant is also the owner of an International Trademark registration for SKYCELL registered in April 2014, and Brazil SKYCELL trademarks registered in 2016.
The disputed domain name was created on February 6, 1995. The Respondent has submitted evidence that he purchased the disputed domain name on March 20, 2008.
The disputed domain name has not resolved to any active website.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name is identical to its trademark SKYCELL.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent has no relevant trademark rights, has not commonly been known by the disputed domain name, and has never used the disputed domain name. It further contends that the mark SKYCELL is so well-known in connection with the Complainant’s products and services that it is inconceivable that the Respondent could now make either bona fide commercial use or legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that since the identity of the Respondent is unclear it is difficult to formulate a claim concerning bad faith (the Panel notes, however, that the Complainant had an opportunity to amend its Complaint after receipt of the Registrar-disclosed Respondent details, merely added the Respondent’s name).
The Complainant submits that it is possible that “a competitor registered the domain to disrupt our business,” but concedes that that is speculation. It also submits that it is possible that the disputed domain name was registered for the purpose of selling it to the Complainant or a competitor of the Complainant. The Complainant suggests that the non-use of the disputed domain name may be indicative of that behaviour.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent states that he is a domain name investor who has owned over 500 domain names and has never been accused of cybersquatting in 20 years.
The Respondent provides evidence by way of an invoice and an order confirmation that he acquired the disputed domain name on March 20, 2008, following a domain name auction. He states that the disputed domain name is comprised of two dictionary words, “sky” and “cell”, which he considered to fit well with potential communications and cellular uses.
The Respondent provides evidence that he acquired the additional domain names
The Respondent submits that the Complainant’s earliest interest in any SKYCELL trademark is the filing date of its Switzerland trademark, namely November 4, 2013. He further submits that, according to the Complainant’s own website, the Complainant itself was only launched in 2013. He contends that it is impossible for him to have acquired the disputed domain name some five years before that date with knowledge of the Complainant’s then non-existent trademark, or otherwise in bad faith.
The Respondent does not dispute that the disputed domain name is identical to the Complainant’s trademark.
The Respondent contends that he has rights or legitimate interests in respect of the disputed domain name because he legitimately invested in the disputed domain name, consisting of the dictionary terms “sky” and “cell”, owing to the inherent attraction of those terms. He points to his acquisition at around the same time of two other domain names including the term “sky”. The Respondent submits that there is nothing inherently illegitimate about investing in domain names or offering them for sale. He reiterates that he could not have acquired the disputed domain name with the Complainant’s trademark in mind, or to target that trademark, since neither the Complainant nor its trademark existed at the date of his acquisition of the disputed domain name.
The Respondent submits that, for similar reasons, he could not have registered the disputed domain name in bad faith. He repeats that he is a well-established domain name investor who acquired the disputed domain name because of its inherent value and not to target the Complainant’s then non-existent trademark. The Respondent reiterates that speculation in domain names is not inherently illegitimate and submits that he has never used the disputed domain name in any manner that would target the Complainant. The Respondent notes the Complainant’s admissions that its submissions as to bad faith are speculative and adds that he cannot have registered the disputed domain name with a view to selling it to the Complainant as the Complainant did not then exist.
The Respondent requests the denial of the Complaint and a finding against the Complainant of Reverse Domain Name Hijacking. He submits that the Complainant knew or ought to have known that it could not prove one or more of the essential elements required under the Policy and, in particular, that the Complainant was doomed to fail owing to the Respondent’s registration of the disputed domain name some five years prior to the Complainant having come into existence.
The Respondent also refers to the offer by the Complainant (during the pendency of this proceeding and copied by the Complainant to the Center) to purchase the disputed domain name from the Respondent for the sum of USD 1,500.
The Respondent contends that the Complainant brought this proceeding knowing it was doomed to failure and in the hope that it would acquire the disputed domain name upon the Respondent’s default.
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has established that it has registered trademark rights in the mark SKYCELL.
The Panel finds that the disputed domain name is identical to that trademark.
While the Complainant’s trademark was filed some five years after the Respondent acquired the disputed domain name, that is not relevant to the “threshold” test provided by paragraph 4(a)(i) of the Policy (although it may well be relevant to the second and third elements set out under paragraph 4(a)).
B. Rights or Legitimate InterestsThe disputed domain name comprises a combination of two dictionary words, “sky” and “cell”. The Panel accepts the Respondent’s evidence that he is a domain name investor who has acquired other domain names comprising dictionary elements, including those containing the term “sky” at around the same time as he acquired the disputed domain name. The Panel further accepts the Respondent’s submission that speculation in domain names is not inherently illegitimate and notes that a registrant may obtain rights or legitimate interests in a domain name comprising dictionary terms and which it uses, or intends to use, in connection with those terms and not to target any third-party trademark (see e.g. section 2.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). While the Respondent has not actively used the disputed domain name in connection with the dictionary terms it contains and therefore does not actually meet the standard typically applied in finding a right or legitimate interest, at least for purposes of rebutting the Complainant’s case, the Panel accepts his evidence that he acquired it with the intention that it be used for that purpose, in particular in connection with possible communications or cellular uses. Further, it is obvious that the Respondent cannot have acquired the disputed domain name to target the Complainant’s trademark, as his acquisition of the disputed domain name took place several years before the Complainant or its trademark came into existence.
The Panel finds therefore that the Complainant has failed to establish its burden under the second element.
C. Registered and Used in Bad FaithWhile the Panel’s findings in respect of rights or legitimate interests are sufficient to dispose of this matter, the Panel will also comment briefly on the issue of bad faith.
The requirement under paragraph 4(a)(iii) of the Policy is a conjunctive requirement to establish both that the disputed domain name was registered in bad faith and that it has been used in bad faith. Furthermore, to establish registration in bad faith, it is clearly established in jurisprudence under the UDRP that the registrant of the relevant domain name must have been aware of, and have intended to target, the relevant complainant’s trademark at the time of registration of the name. In this case that is plainly impossible, since the Respondent acquired the disputed domain name some five years before the Complainant or its trademark came into existence.
Furthermore, the Complainant has failed to establish even a prima facie case that the disputed domain name has been used in bad faith. While it speculates that the Respondent may have acquired the disputed domain name to disrupt its business, or to attempt to sell the disputed domain name to it, it admits that these contentions amount to speculation and provides no evidence in support of any such intentions on the Respondent’s part. In the view of the Panel, the fact that the disputed domain name has not been actively used does nothing in this case to support the Complainant’s allegations of use in bad faith.
The Panel finds therefore that the Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith.
7. Reverse Domain Name HijackingAs provided by paragraph 15(e) of the Rules: “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.”
The Respondent submits that it is obvious that the Complaint was brought in bad faith because the Respondent acquired the disputed domain name in 2008, some five years before the Complainant came into existence or filed any trademark application. While those facts may be correct, the Panel notes that the date of the Respondent’s acquisition of the disputed domain name was not necessarily known to the Complainant: in particular, the available WhoIs information states that the disputed domain name was created on February 6, 1995 and updated on January 9, 2021 (neither date corresponding to the Respondent’s own evidence).
However, even if the Complainant thought it possible that the Respondent acquired the disputed domain name in 2021 after the Complainant’s registration and use of the SKYCELL trademark, the Complainant has still not produced a shred of evidence to demonstrate, or even to give rise to an inference that, the Respondent’s registered the disputed domain name with the knowledge of that trademark and in order to target it, rather than owing to any inherent value. The Complainant even admits that its submissions as to bad faith are speculative, and while commenting that it was initially uncertain of the Respondent’s identity, it seems to have made no further enquiries upon disclosure of that information by the Registrar.
In circumstances where the Complainant has failed to establish even a prima facie case in respect of bad faith, the Panel can only conclude that the Complainant had no reasonable or good-faith basis to invoke, or at least following receipt of the information provided by the Registrar: to continue with, the UDRP against the Respondent and brought this proceeding speculatively and therefore in bad faith. The Panel therefore upholds the Respondent’s submission that the Complaint constitutes an attempt at Reverse Domain Name Hijacking.
8. DecisionFor the foregoing reasons, the Complaint is denied.
Steven A. Maier
Sole Panelist
Date: September 27, 2021