The Complainant is Precision Medicine Group, LLC, United States of America (the “United States” or “USA”), represented by OlenderFeldman LLP, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Sheng Chunliang (盛纯良), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 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 20, 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 December 20, 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 December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.
The Center appointed Michael D. Cover as the sole panelist in this matter on February 9, 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 the owner of the trademark APOSTREAM, which is registered in USA under registration No 4,441,993 as of October 15, 2013, and as a European Union trademark under No 10455756 as of June 14, 2012. First use in commerce of June 1, 2011, was claimed in relation to the USA trademark registration. The USA trademark registration had been assigned to the Complainant from its pervious owner as October 7, 2019. The Complainant and its predecessor in business have used and promoted the APOSTREAM since at least as early as June 1, 2011.
The Complainant had been the owner of the Disputed Domain Name from August 4, 2011 to August 4, 2021, when that domain name lapsed. The Complainant used the previously-registered iteration of the Disputed Domain Name to promote its business, until that domain name lapsed.
The Disputed Domain Name was registered by the Respondent on October 23, 2021. The Respondent’s details were originally subject to a privacy shield and were then subsequently confirmed as set out at the beginning of this Decision.
5. Parties’ Contentions A. Complainant Identical or Confusingly SimilarThe Complainant submits that the Respondent is utilizing the Disputed Domain Name, which has the same name as the APOSTREAM trademark of the Complainant, which has been used and actively promoted since as early as June 1, 2011. The Complainant continues that this trademark is incontestable under USA trademark law and this is “conclusive evidence of the validity of the registered mark and its registration, of the registrant’s [that is the Complainant’s] ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce”, and refers the Panel to 15 U.S.C. section115(b).
The Complainant then sets out the history of the registration and use by the Complainant of the Disputed Domain Name under its previous iteration, until the registration inadvertently lapsed.
Rights or Legitimate InterestsThe Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name or the Complainant’s APOSTREAM trademark.
The Complainant sets out that, as of November 30, 2021, the Respondent is not using the Disputed Domain Name as the relevant webpage is incapable of loading and displaying any content and that there is no evidence that the Respondent used the “apostream” name in relation to any business dealings and/or offering of goods or services.
The Complainant also submits that there is no evidence that the Respondent has been commonly-known by the name “apostream” or any derivative of that name and that, on the information and belief of the Complainant, the Respondent is not using the Disputed Domain Name for a legitimate use other than to divert consumers or tarnish the APOSTREAM trademark or as an effort at cybersquatting.
Registered or Used in Bad FaithThe Complainant submits that the Domain was registered by the Respondent in bad faith.
The Complainant states that the Complainant used the previous iteration of the Disputed Domain Name in conjunction with its APOSTREAM trademark until October 23, 2021, at which point registration of that domain inadvertently lapsed and the Respondent then immediately registered the Disputed Domain Name.
The Complainant also states that, as of November 30, 2021, the Disputed Domain Name, as the relevant webpage is incapable of loading and displaying any content. The Complainant submits that it does not appear that the Respondent registered the Disputed Domain Name for any purpose other than to prevent the Complainant from using the Disputed Domain Name and promoting the Complainant’s APOSTREAM trademark. The Complainant also concludes that, given the Respondent’s non-use of the Disputed Domain Name, the Respondent only registered the Disputed Domain Name to attract commercial gain and/or interfere with the Complainant’s trademark rights.
The Complainant requests that the Panel decides that the Disputed Domain Name be transferred back to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and that the Respondent has no rights or legitimate interests of the Disputed Domain Name; and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established registered rights in its trademark APOSTREAM.
The Panel also finds that the Disputed Domain Name is identical to the Complainant’s trademark APOSTREAM, in which the Complainant has rights. The Disputed Domain Name incorporates the Complainant’s APOSTREAM trademark, in which the Complainant has rights, in full and, in assessing the identity or confusingly similarity, it is well established that the generic Top Level Domain (“gTLD”), as “.com”, is viewed as a standard registration requirement and as such is disregarded under the first element.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark APOSTREAM, in which the Complainant has rights, and that the provisions of the Policy, paragraph 4(a)(i) have been met.
B. Rights or Legitimate InterestsThe Panel accepts and finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Panel therefore finds that the provisions of paragraph 4(a)(ii) have been met. The Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not, before any notice to the Respondent of the dispute, made use or demonstrable preparations to use the Disputed Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services nor has the Respondent been commonly-known by the Disputed Domain Name nor has the Respondent made 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.
C. Registered and Used in Bad FaithThe Panel accepts and finds that the Disputed Domain Name has been registered and used in bad faith.
It is a reasonable inference that the Respondent probably knew of the existence and reputation of the Complainant’s APOSTREAM trademark. The Respondent registered the Disputed Domain Name immediately following the lapsing of the previous iteration of that domain name, then owned by the Complainant. In addition, the APOSTREAM trademark was adopted and registered many years before the Respondent registered the Disputed Domain Name. As far as the Panel can tell, “apostream” has no dictionary meaning, the Disputed Domain Name is not being used, and the Panel finds no reason why the Respondent would have registered the Disputed Domain Name if not for its trademark significance and to take advantage of that trademark significance. In these circumstances, and in the absence of any exculpatory explanation from the Respondent, the Panel finds that the Complainant has established the Disputed Domain Name was registered in bad faith.
As to use of the Disputed Domain Name in bad faith Panelists have recognized that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Looking at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), all of the relevant factors in applying the passive holding doctrine are present in this case. The APOSTREAM trademark is distinctive and the USA registration of that trademark has become incontestable and, although the Panel has no figures before it, it is a reasonable inference that, over many years of use by the Complainant and its predecessor in business, a substantial reputation has been built up in that trademark.
The other relevant factors on passive holding that are present are that the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use, that the Respondent concealed its identity and that is implausible that there could be any good faith use to which the Disputed Domain Name has been out.
The Panel accordingly finds that the Respondent has registered and used the Disputed Domain Name in bad faith and that the provisions of the Policy, paragraph 4(a)(iii) have been met.
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,
Michael D. Cover
Sole Panelist
Date: February 23, 2022