The Complainant is Flexspace No 2 LLP, United Kingdom, represented by Freeths LLP, United Kingdom.
The Respondent is Michael Angelo Justiniano, Flexspace AS, Norway.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 December 28, 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 amended Complaint on December 30, 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 January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. The Respondent sent an informal email communication on February 2, 2022, requesting an extension of due date for Response. The Center informed the Parties by email that the new Response due date was February 7, 2022. The Respondent did not file a Response and the Center informed the Parties of its commencement of Panel Appointment Process on February 10, 2022.
The Center appointed Knud Wallberg as the sole panelist in this matter on February 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 is a limited liability partnership registered under the laws of England and is a provider of flexible offices, workshops, industrial and self-storage spaces throughout the United Kingdom. The primary brand under which the Complainant provides such services is FLEXSPACE.
The Complainant is the registered proprietor of a number United Kingdom and European Union trademark registrations which incorporate the word FLEXSPACE including European Union Trademark No. 015865521 registered on December 22, 2017, for services in classes 35, 36, 39 and 43 and United Kingdom trademark No. 00915865521 registered on November 1, 2016, also for services in classes 35, 36, 39 and 43.
The Respondent is a public limited company registered under the laws of Norway. The Respondent acts as an agent in the professional leasing marked who finds suitable offices and connects the potential tenants with the office operators. The Respondent is the proprietor of the Norwegian trademark registration No. 313080, filed on December 10, 2020, and registered on December 18, 2020, for services in classes 35 and 42.
The disputed domain name was registered on June 22, 2020, and resolves to an active website for the Respondent’s business.
The Complainant sent a cease and desist letter to the Respondent on September 28, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the disputed domain name is identical to its registered trademark FLEXSPACE. The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s rights predate the Respondent’s registration of the disputed domain name, and the Complainant has not licensed or otherwise authorized the Respondent to use the FLEXSPACE trademark.
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name makes use of the Complainant’s registered trademark FLEXSPACE, in direct contravention of the Complainant’s trademark rights, whereby it takes unfair advantage of the Complainant’s rights. On this basis alone, the Complainant consider the registration of the disputed domain name to be in bad faith. Additionally, the Complainant submits that the disputed domain name has been intentionally used to attract Internet users, for commercial gain, to the Respondent’s website by creating a connection with the FLEXSPACE trademark, such connection arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent.
B. RespondentThe Respondent did not file a formal reply to the UDRP Complaint. However, the Parties exchanged letters between them before the Complainant filed the present Complaint. In this communication between the Parties, the attorney that represented the Respondent refused the Complainant’s allegations that the Respondent infringes the rights of the Complainant, stating that their client (the Respondent) holds a Norwegian registration of the mark FLEXSPACE for services in classes 35 and 42 and that the Parties operate in different business segments.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the language of the Registration Agreement is Norwegian. The Complaint was filed in English, and while no formal Response was submitted, the Respondent sent the email communications in English, and did not oppose to the Complainant’s request for English to be the language of the proceeding. The Panel has decided to render this decision in English.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is identical (in the sense of the Policy) to the Complainant’s registered FLEXSPACE mark.
The disputed domain name thus comprises the Complainant’s FLEXSPACE mark in its entirety. The generic Top-Level Domain (“gTLD”) “.tech” is a standard registration requirements and as such generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to all the disputed domain names.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation, several circumstances any of which, if found by the Panel to be proved, demonstrates the Respondent’s rights or legitimate interests in the disputed domain name. Notably, paragraph 4(c)(i) of the Policy requires the Respondent to show that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.
Although the Respondent did not file a formal response in this proceeding, the Panel finds that it is clear from the immediate facts of the case that the disputed domain name reflects the distinctive part of the Respondent’s company name Flexspace AS, which according to the publicly available information was incorporated on May 6, 2020, and registered in the companies register on June 10, 2020, i.e. before the disputed domain name was registered. Furthermore, the Respondent informed the Complainant, before the Complainant filed the Complaint, that they have registered the trademark FLEXSPACE in their country of residence Norway. The Panel’s search in the trademark register of the Norwegian Patent Office (“Patentstyret”) confirms this information and it further shows that the trademark was applied for and registered before any notice of the present dispute.
While the Complainant’s trademark rights predate the Respondent´s incorporation as a company and it´s trademark registration, the Panel cannot deny the possibility that both Parties developed coincidentally but independently their respective businesses in different jurisdictions. In this respect, the Panel notes that the composition of the disputed domain name combines the commonly used terms “flex” and “space”.
The Panel finds that, in these circumstances, the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe examples listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which bad faith registration and use may be found, but in essence a finding of bad faith requires that there is a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name.
In the present case, the Respondent has registered a domain name that reflects both their company name and their registered trademark. As mentioned above, according to the publicly available information the date of incorporation of the Respondent’s company was May 6, 2020, and it was registered in the companies register on June 10, 2020, i.e. before the disputed domain name was registered. In addition, the Panel notes that while the disputed domain name was registered before the Respondent’s registration of its matching trademark, the Panel considers that there was a relatively short time between both registrations, and that the Respondent’s use of the disputed domain name before its trademark application seemed already to correspond to its business purpose.1
The Panel thus finds on the available record that there is no evidence or indication that the disputed domain name was registered for the purpose of profitable sale, or in a pattern of making blocking registrations, or to disrupt the Complainant’s business, or to confuse the Complainant’s customers, or for any other reason than to register a domain name for the purpose of providing the Respondent’s services, and that reflects the Respondent’s company name and trademark.
Further, the Panel finds that there is no evidence or indications that the disputed domain name has been used in bad faith under the Policy. On the contrary, as mentioned above the domain has been and is used as URL-address for the website of the Respondent’s business and is currently being used for the Respondent’s email address.
The Panel therefore finds that the Complainant has failed to prove that the disputed domain name was registered in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Knud Wallberg
Sole Panelist
Date: February 28, 2022
1 As part of the general powers of the Panel, as articulated, inter alia, in paragraph 10 of the Rules, the Panel has further corroborated the use of the disputed domain name through the Internet Web Archive by visiting a screen capture of December 5, 2020.