The Complainant is Genadi Man, Switzerland, self represented.
The Respondent is Yinghua Zhao, Tiaoguomaogu, Philippines, self represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 October 26, 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 October 28, 2021.
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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Response was filed with the Center on December 9, 2021.
The Center appointed John Swinson as the sole panelist in this matter on January 14, 2022. 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 provided a Wikipedia entry about himself. He resides in Switzerland.
After venture capital investments in the real estate and aviation sectors, in 2008 the Complainant founded Man Oil Group AG (later Arva Greentech AG), a company specializing in technologies for the large-scale treatment of oil waste and oil sludge. The Complainant was Chairman of the Board of Man Oil Group AG until June 1, 2016. In 2018, the Complainant founded the Swiss start-up kasko2go.
The Complainant owns Swiss Registered Trademarks for “manoilgroup” and “manoilgroup.com” (the “MANOILGROUP trademarks”). These registrations, numbers 768695 and 768707, were filed on August 22, 2021 and registered on September 1, 2021.
The disputed domain name was registered on July 8, 2020.
Little is known about the Respondent.
The website at the disputed domain name is titled “saobinv.com”, is mostly in Chinese, and appears to have the purpose of advertising pornography or sex services.
5. Parties’ Contentions A. ComplainantIn summary, the Complaint made the following submissions:
The Complainant owns the trademarks set out in Section 4 above. The disputed domain name includes the entire trademark.
The disputed domain name is not being used or used by the Respondent to make a bona fide offer for the sale of goods or services. The disputed domain name does not reflect the name of the Respondent. The Respondent was not known by the disputed domain name. The Respondent is not making a lawful noncommercial or acceptable fair use of the disputed domain name. The Respondent uses the domain name to distribute pornography.
The Respondent uses the disputed domain name to tarnish the reputation of the Complainant’s trademark.
As set out in the correspondence sent by the Respondent to the Complainant, the Respondent intends to add more pornography to the website at the disputed domain name and send links to this site to the Complainant’s business partners, so that they think that the Complainant and his trademarks are engaged in the distribution of pornography, which in the opinion of the Respondent will make it impossible to conduct business under the MANOILGROUP trademarks.
In business circles, the Complainant is inextricably associated with the name “Manoilgroup”. On September 1, 2021, the Complainant registered the rights to the “manoilgroup” and “manoilgroup.com” trademarks. On September 16 and 17, 2021, the Complainant received emails from the Respondent offering to sell the disputed domain name to the Complainant for USD100,000. The Complainant then discovered that the disputed domain name is being used for a website that hosts pornography. This is evidence of registration and use of the disputed domain name in bad faith.
B. RespondentThe Respondent submitted a Response. The Response did not address any of the three elements of the Policy. The Response stated: “The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name to the Complainant.”
6. Discussion and FindingsTo 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 where the Respondent does not file a formal response.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman,WIPO Case No. DIO2020-0007.
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 SimilarThe first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns a registered trademark for MANOILGROUP.
The disputed domain name includes the Complainant’s trademark MANOILGROUP in its entirety.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark.
Further, the disputed domain name consists only of the Complainant’s MANOILGROUP trademark, as the Top-Level Domain “.com” is disregarded under the first element confusing similarity test.
The Panel accordingly concludes that the disputed domain name is identical to the Complainant’s MANOILGROUP trademark.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate InterestsThe 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 asserts that the disputed domain name is not being used by the Respondent to make a bona fide offer for the sale of goods or services, that the disputed domain name does not reflect the name of the Respondent and that the Respondent was not known by the disputed domain name.
Further, the Complainant asserts that the Respondent made a commercial use of the disputed domain name. The Complainant asserts that the Respondent’s use of the disputed domain name is not bona fide.
The Respondent’s use of the disputed domain name for a pornography website (especially noting the threat made to the Complainant) does not, absent any legitimate explanation, provide the Respondent with rights or legitimate interests in the disputed domain name. See:Tipico Co. Ltd. v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2020-0446; G Y J España Ediciones S.L. en C. v. Chesterton Holdings,WIPO Case No. D2007-1100; National Hockey League And Lemieux Group Lp v. Domain For Sale,WIPO Case No. D2001-1185; and contrast NP Factory Werbeagentur GmbH and Nastroje P. GmbH & Co. KG v. Demurrelt Enterprises Limited,WIPO Case No. D2007-1858.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
For the reasons set forth above, the Panel concludes the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad FaithParagraph 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.
On September 16, 2021, the Respondent sent an email to the Complainant that stated:
“I represent the tiaoguomaogu organization.
We know that you have registered the manoilgroup trademark.
We are the owner of the domain name manoilgroup and we have a proposal regarding it.
Are you interested in cooperation on this issue?”
A further email was sent on September 17, 2021, by the Respondent, that stated:
“We offer you to purchase the domain name manoilgroup.com.
The Manoilgroup website contains pornography, including those involving children and animals. If you do not purchase a domain name from us, we will add more pornography to the site in the future. We will monitor the development of your business and will send your partners links to this site, so that they think that this site belongs to you and you are distributing pornography.
So you won't be able to do business if you don't buy this domain name from us.
We are ready to sell you the domain name Manoilgroup.com for $ 100,000.”
The Complainant’s trademark was registered on September 1, 2021, after the Respondent registered the disputed domain name on July 8, 2020. The evidence, including information affirmed by a limited Internet search conducted by the Panel, shows that the Complainant was the founder of the Man Oil Group in 2008, but the Complainant provided no specific evidence of his common law rights, or specific evidence of why the Complainant and not the Man Oil Group AG (which appears either to have changed its name or is no longer in existence) has such common law rights. The Complainant asserts that he is “inextricably associated” with the MANOILGROUP trademark. On the other hand, the emails from the Respondent admit that the Respondent was aware of the Complainant’s trademark rights, the Respondent emailed the Complainant to extort money from the Complainant, and the Response does not deny any statements made by the Complainant and explicitly consents to the remedy requested by the Complainant.
In the specific circumstances of this case, the Panel on balance is inclined to draw an adverse inference against the Respondent from the Respondent’s statements in the Respondent’s emails to the Complainant and the admission in the Response. On the whole, and still noting the Complainant’s overall responsibility to properly present its case, the Panel finds that the Respondent’s statements and admission unquestionably tip the scales in the Complainant’s favour on this point. The Panel finds that the Respondent registered the disputed domain name knowing of the Complainant’s trademark rights and with the aim to sell the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (moreover via an extortion scheme). See paragraph 4(b)(i) of the Policy, and contrast Pixers Ltd. v. Whois Privacy Corp.,WIPO Case No. D2015-1171.
The Panel also finds 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 website under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
7. DecisionFor 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: January 28, 2022