ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION QlikTech International AB v. Maria Monroe Case No. D2024-3555 1. The Parties The Complainant is QlikTech International AB, Sweden, represented by Abion AB, Sweden. The Respondent is Maria Monroe, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2024. On September 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2024, 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 (Redacted for Privacy, Privacy service provided by Withheld for privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2024, 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 September 5, 2024. 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 September 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2024.
page 2 The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 3, 2024. 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, established at least as early as its first trademark applications dated 1996, now has offices in North America, Canada, Brazil, Mexico, Europe, Middle East, Asia and Africa. Its business is to provide analytical services that enable organizations to increase their efficiency by making the best use of the data available to them. The Complainant provides analytical computer services for this purpose. The Complainant has thousands of satisfied customers worldwide and was recognized as a Top 10 Innovative Growth Company by Forbes in 2015. The Complainant has or has held about 30 registrations for the trademark or service mark (“trademark”) QLIK, of which the following are representative for the purposes of this proceeding: QLIK, word mark, European Union trademark, registered on May 16, 2000, registration number 1115948, in classes 9, 35, and 42; QLIK, word mark, Swedish trademark, registered on April 1, 2005, registration number 371354, in classes 9, 38, 41, and 42; and QLIK, word mark, United States trademark, registered on December 10, 2002, registration number 2657563, in class 9. No background information is available about the Respondent except for the contact details provided to the Registrar in order to register the disputed domain name on August 16, 2024. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant holds trademark registrations for QLIK in several jurisdictions. The disputed domain name differs from the Complainant’s trademark by the addition of the descriptive term “views”, which the Complainant says does not sufficiently differentiate the disputed domain name from the Complainant’s trademark. Furthermore the Complainant has a product named “QlikView”, thus the suffix “views” may add to the risk of confusion with the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademark registrations pre-date the registration of the disputed domain name. The Complainant states it is not affiliated with the Respondent, has not licensed or authorized the Respondent to use the Complainant’s trademark, and did not authorize the Respondent to register or use the disputed domain name. The Complainant says according to its enquiries there is no evidence the Respondent has been known by the disputed domain name or has held a related trademark.
page 3 The Complainant says there is no evidence there has been any bona fide use or contemplated use of the disputed domain name, which is passively held. The Complainant cites the discussions in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”) and refers to section 3.3 of “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition” (“WIPO Overview 3.0”), in support of its contention that because there is no good faith use to which the disputed domain name may plausibly be put, the Respondent does not appear to have rights or legitimate interests in the disputed domain name. The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Part of the Complainant’s contentions in the matter of bad faith were canvassed under the heading of Rights and Legitimate Interests (above). The Complainant submits that all of the prerequisites discussed in Telstra and in section 3.3 of WIPO Overview 3.0 for there to be a finding of registration and use in bad faith are satisfied by the evidence. The Complainant says the Respondent should have searched online for the Complainant or its trademark, and would have found them. The Respondent has probably registered the disputed domain name with knowledge of the Complainant and with intent to trade on the Complainant’s goodwill, representing registration of the disputed domain name in bad faith. The Complainant says, citing WIPO Overview 3.0. that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. There may also be a deliberate intention by the Respondent to divert Internet traffic intended for the Complainant to the Respondent. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “views”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. In particular, there is no evidence the disputed domain name has been used for a bona fide offering of goods or services, or for a legitimate noncommercial or fair purpose, or used at all. There is no evidence the Respondent has ever been known by the disputed domain name or a similar name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant has referenced paragraph 4(b)(ii) of the Policy, which provides for a finding of bad faith where: “you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct”. There is no evidence the Respondent has engaged in a pattern of the conduct of making blocking registrations of domain names. The Complainant has also asserted that the Respondent’s “… deliberate attempt to confuse and divert traffic away from the Complainant’s legitimate website, coupled with the Respondent’s failure to provide any legitimate use or content, supports the Complainant’s contention of bad faith”, which if proven would fall within the ambit of paragraph 4(b)(iv) of the Policy. Since there is no evidence of actual use or intended use of the disputed domain name, for either website or email purposes, it is more appropriate in this instance to examine the applicability of the doctrine of passive holding. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Whilst previous decisions under the Policy do not have precedential status, nevertheless the suggested guidelines for the determination of passive holding set out in Telstra have been extensively cited with approval in subsequent cases.
page 5 First is the strength and reputation of the Complainant’s trademark. The trademark QLIK is not a dictionary word or properly a word at all, and is to that extent distinctive. The Complainant has existed for about 28 years and in recent years has had a presence in North America, Canada, Brazil, Mexico, Europe, Middle East, Asia and Africa. The Complainant has won trade awards for excellence and as long ago as 2015 was recognized as a Top 10 Innovative Growth Company by Forbes. There is no evidence the trademark term QLIK has been used by any other entity than the Complainant. For the purposes of this proceeding, the Panel finds that the Complainant’s trademark has distinctiveness and a reputation within the meaning of the Policy. The Respondent has not responded or provided any evidence of actual or contemplated use of the disputed domain name in good faith. Two criteria promoted in Telstra for a finding of passive holding being in bad faith were that a respondent actively concealed its identity, and used false contact details. The present Respondent has concealed its identity publicly by use of a privacy service, which in itself is not imprudent. The underlying registrant’s name, address, telephone number and email contact as furnished to the Registrar have a superficial appearance of reality and in the absence of evidence to the contrary, do not appear to equate with concealment or falsification of the Respondent’s identity. Conversely, the fact that the Respondent may have provided their true contact details would not absolve them from a finding of registration and use of the disputed domain name in bad faith. The final question is whether the disputed domain name could plausibly be put to any good faith use. Having regard to the effectively unique qualities of the Complainant’s trademark, its relatively well-known status and reputation within its field, and without the benefit of any reasonable explanation from the Respondent as to why it has been incorporated into the disputed domain name, the Panel finds on the balance of probabilities that the disputed domain name has no reasonable prospect of a use, for either a website or email purposes, that would not conflict with the Complainant’s trademark rights. Taking into account the additional word “views” in the disputed domain name, making the whole correspond closely with the Complainant’s product “QlikView”, strengthens the conclusion on balance that the Respondent was aware of the Complainant, its trademark and its product when registering the disputed domain name and thus targeted specifically the Complainant for a nefarious purpose. On the totality of the evidence, the Panel finds the disputed domain name to have been registered and used in bad faith by the Respondent in the terms of paragraph 4(a)(iii) of the Policy. 7. 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 be transferred to the Complainant. /Dr. Clive N.A. Trotman/ Dr. Clive N.A. Trotman Sole Panelist Date: October 10, 2024
Full & Egal Universal Law Academy