Complainant is Informz, Inc. of Saratoga Springs, New York, United States of America (“United States”), represented by Phillips Lytle LLP, United States.
Respondent is Shih Koon Chia, Assure IT Pte Ltd of Singapore, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a request for clarification by the Center, Complainant filed respectively two amendments to the Complaint on April 27 and 28, 2016.
The Center verified that the Complaint together with the two amendments 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. The Response was filed with the Center on May 18, 2016.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on May 26, 2016. 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
According to WhoIs the Domain Name was registered on February 16, 2016. 5. Parties’ Contentions A. Complainant
Complainant states that the Domain Name is identical to Complainant’s trademark no. 3,494,222 INFORMZ, registered with USPTO on September 2, 2008 for services in class 38, and no. 4,045,308 INFORMZ THE WAY TO KNOW EMAIL MARKETING registered on October 25, 2011 for services in class 38, and is also confusingly similar to the primary websites for Complainant’s organization, most notably . Complainant also states that it uses the trademark INFORMZ (“Complainant’s Trademark”) in its other registered domain names, and .
The services provided by Complainant in association with the INFORMZ trademark and domain name include a range of business marketing, promotion and consulting services.
Complainant contends that it did business in association with the now trademarked name INFORMZ in years prior to its trademark registration in 2008. Complainant further contends that the Domain Name is identical to its registered trademark INFORMZ in all characters outside of the country code Top-Level Domain (“ccTLD”) “.co”, and that the identical nature of the Domain Name has already proven confusing to site users intending to visit Complainant’s “www.m” website. For example, Complainant first became aware of the newly registered Domain Name when an Internet user intending to visit Complainant’s “www.m” website was mistaken.
Complainant states that it offers technology and communications services to clients across the globe and due to the nature of its business offerings, email message recipients and businesses worldwide will see messages that include Complainant’s logo and links to its websites “www.m”, “www.” and “www.”. The global reach of Complainant’s Trademark (an estimated 2 billion messages will be sent in the current calendar year) means that Respondent and Complainant may operate in the same markets, which may result in confusion on the part of Internet users.
Complainant argues that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name as it has not been commonly known by the name “informz” in business or personal functions prior to communications between Complainant and Respondent on the subject.
Complainant asserts that it has been in email communications with Respondent, and Respondent has indicated its intentions to use the Domain Name for commercial purposes. Complainant finds no evidence, outside of Respondent’s declaration, of official business use of the terms “” or “informz” outside of the recently registered Domain Name by Respondent prior to its registration or communication between the two parties on the topic, and asserts that the burden of establishing legitimate interests and rights to the Domain Name should be shifted to Respondent.
Complainant submits that the Domain Name should be considered as having been registered and used in bad faith by Respondent on the grounds that Respondent selected the Domain Name, which is not a common word or phrase, with a view to benefit commercially from the reputation of and similarity to Complainant’s Trademark while operating in similar areas of business.
Due to the confusing similarity between the Domain Name and Complainant’s Trademark, Complainant argues that Respondent registered the Domain Name in an attempt to block Complainant’s ability to register it, due to being possible competitors in similar industries and/or for the purpose of cybersquatting (typosquatting) for a profit.
Prior to filing of this Complaint, Complainant contacted Respondent via email, to request voluntary transfer of the newly registered Domain Name to Complainant. Respondent replied saying “To transfer the domain name to your organization, we would have to search for another suitable product and domain name, redesign our marketing collaterals, and migrate our existing clients to the new domain name. We are however, open to consider propositions from your company to effect the transfer. Do email me the details and we will consider any serious offers.”
Complainant concludes that Respondent has registered the Domain Name in bad faith for the intended purpose of profiting from the possible sale of the Domain Name to Complainant. B. Respondent
Respondent acknowledges that Complainant’s Trademark and Domain Name are similar, although it denies the allegation that it operates in the same business area as Complainant or that it poses a risk of confusion to threshold Internet users.
Respondent states that its primary business areas are IT Security and Software Solutions, and that the Domain Name was registered to host a web application for Respondent’s clients from the training and education industries.
Respondent disputes Complainant’s claim of a global reach, and says further that Complainant’s assertion of sending 2 billion messages, while having a client base of over 1,400 organizations as clients (from Complainant’s corporate Linkedin profile), equates to over 1.3 million messages sent per organization, which Respondent suggests are activities that could be associated with spamming. Respondent asserts that it does not associate with mass emailing nor spamming, and currently operates primarily in the Asian region. It is thus evident, Respondent argues, that Complainant and Respondent operate in different business areas and locations, and pose no risk of confusion to threshold Internet users. Additionally, it is evident that Respondent desires no association with Complainant’s Trademark, brand nor business in view of the nature of Complainant’s business activities.
Respondent denies the allegation that he is “typosquatting”. He asserts that the word “informz” is a derivation of the generic, descriptive, common dictionary word “informs”. The intentional misspelling by replacing the “s” with “z” is commonly found in slang (e.g., “boyz”, “dealz”, etc.) and in the registration of domain names because of their availability and the suggestion of creativity. Complainant failed to register the Domain Name despite claims of being a “technology and communications” company with a global reach.
Respondent claims that Complainant, on accessing the “www.” landing page which requires users’ login IDs and passwords, should have been able to immediately recognise that the said Domain Name is used for a web application/portal with access control. Complainant failed to provide evidence to suggest that Respondent engaged in cybersquatting or aimed to profit via an association with Complainant’s Trademark or domain name (there was no redirection to third-party websites, no references to the Complainant’s business or domain name, no affiliate marketing, no pay-per-clicks or other indications typically associated with cybersquatters or companies seeking to profit from association with other brands or trademarks), even though the onus of providing such proof lies with Complainant.
Notwithstanding the failure of Complainant to fulfill their responsibility to provide evidence against Respondent, there is sufficient evidence to prove that Respondent has legitimate interest in and that it has registered the Domain Name in connection with a bona fide offering of goods or services.
Respondent claims that Complainant has failed to provide evidence to support its allegation that the Domain Name “was registered in bad faith for the purpose of cybersquatting (typosquatting)”, which allegation it denies and says further that a check with Respondent’s primary domain hosting company, will show that Respondent owns less than ten domain names; evidence Respondent claims, that it does not engage in cybersquatting.
In terms of Complainant’s suggestion that Respondent has registered the Domain Name in bad faith for the intended purpose of profiting from the possible sale of the Domain Name to Complainant, Respondent states that there were a series of email communications between the parties concerning the sale of the Domain Name. The original email from Complainant was on April 8, 2016, requesting the voluntary transfer of the Domain Name to it, followed by an email on April 12, 2016 wherein Complainant offered to pay USD 500 for the Domain Name. Respondent replied on April 13, 2016 with a counter-offer of USD 600 for Complainant’s domain name. This offer was declined by Complainant on April 15, 2016, and Respondent emailed on April 15, 2016 with an offer of USD 25,000. Respondent supports the offer of this amount by saying that whilst the offer price may be higher than the out-of-pocket expenses incurred by Respondent, the replacement cost of a similarly apt domain name for Respondent is much higher.
Respondent seeks a finding of Reverse Domain Name Hijacking on the basis that:
(a) the Complaint was brought in bad faith because Complainant knew or should have known at the time it filed the Complaint that it could not prove that the Domain Name was registered in bad faith.
(b) Complainant has harassed and disrupted Respondent’s business operations on two occasions prior to the Complaint being filed:
On March 21, 2016, Respondent noted that the domain was suspended and not pointing to intended data center. When Respondent queried the domain name hosting company, Vodien, about the issue, Vodien replied that it was “reported that the domain name is registered in bad faith” and that “the domain name is used for spamming and phishing in regards to ”. Respondent advises that this was the first time it had become aware of Complainant’s company and business activities. The case was closed on March 22, 2016, and the Domain Name was un-suspended after Respondent provided evidence to Vodien, and the Registry, showing the legitimacy of Respondent’s company and use of the Domain Name.
On March 24, 2016, Respondent received an abuse notification from LeaseWeb, which is the data centre hosting the web application. Again Respondent observed that the originator of the complaint was from Complainant. The issue was resolved after Respondent replied to LeaseWeb, detailing Respondent’s legitimate business activities and usage of the Domain Name.
(c) Complainant has intentionally attempted to mislead the Panel by omitting material evidence such as that listed above. 6. Discussion and Findings
For the reasons set out below Complainant succeeds in its Complaint and Respondent fails in its counter allegation of reverse domain name hijacking. A. Identical or Confusingly Similar
Complainant asserts that its trademark INFORMZ was registered with the United States Patent and Trademark Office (USPTO) in 2008 and that it uses the trademark (“Complainant’s Trademark”) in its other registered domain names and .
Complainant further contends that it used Complainant’s Trademark in years prior to its trademark registration in 2008. It alleges that it offers a range of technology and communications services across the globe and that Complainant’s Trademark is used on or in relation to approximately 2 billion messages a year. Complainant contends that Complainant and Respondent may operate in the same markets, which may result in confusion on the part of Internet users. That is, on the basis that the Domain Name is identical to Complainant’s Trademark in all characters outside of the ccTLD “.co”. Complainant alleges that instances of actual confusion have in fact arisen.
The Panel is satisfied that Complainant and Respondent operate in broadly analogous areas and the use of the Domain Name which, for all intents and purposes, is identical to Complainant’s Trademark is likely to lead to the implication that a website which, for example, resolves to the Domain Name is in some way affiliated, connected, or otherwise associated with Complainant, contrary to the fact.
Respondent has endeavoured to explain its choice of the Domain Name, on the basis that it is simply a generic term “inform” to which is added the letter “z” and that this intentional misspelling is commonly found in slang and to customers would be suggestive of creativity. That does not fully explain why it chose an identical misspelt word widely used in an analogous commercial area. Nor does it meet the assertion that Complainant’s Trademark and the Domain Name are identical. As a result, the Panel finds that the Domain Name is identical and confusingly similar to Complainant’s Trademark.
It is therefore found that Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Respondent is not apparently affiliated with Complainant and has not been authorized by Complainant to use and register its trademarks or to seek the registration of any domain name incorporating Complainant’s Trademark.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Domain Name as it has not been commonly known by the name “informz” in business or personal functions and that there is no evidence of official business use of “” or “informz” outside of the recently registered Domain Name. Respondent has not provided any convincing evidence to rebut such arguments.
Complainant alleges that Respondent registered the Domain Name for the intended purpose of profiting from the possible sale of the Domain Name to Complainant and effectively that is the true purpose for the registration of the Domain Name. While this allegation is more properly dealt with under the ground of “Bad Faith” it is also relevant under this ground. That is, on the basis that if the Panel finds that this was a plausible reason for the registration of the Domain Name that would not support Respondent’s claim to a right or legitimate interest in the Domain Name. Further, the Panel may conclude that such activity would not be consistent with any rights or legitimate interests on Respondent’s part.
On this basis, the Panel considers that, on balance, Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that it is established that Respondent has registered and used the Domain Name in bad faith.
It is not difficult to infer that Respondent knew or ought to have known of Complainant’s Trademark at the time it registered the Domain Name. Respondent questions Complainant’s business model and suggests it is a spammer. Respondent also challenges the number of emails allegedly sent by Complainant. Respondent asserts that it first became aware of Complainant on March 21, 2016 and that it does not wish to associate itself with mass emailing and spamming.
However, the question is not whether Complainant’s business is run in an acceptable manner but whether Complainant’s Trademark has sufficient reputation or notoriety and whether it is reasonable to infer that Respondent knew or ought to have known, had it chosen to find out. The Panel is satisfied that the scale of Complainant’s business is sufficient to allow an inference to be drawn that the necessary knowledge on Respondent’s part must have existed at the relevant time, whether such knowledge is actual or constructive.
As noted above, Complainant argues that Respondent registered the Domain Name in bad faith for the intended purpose of profiting from the possible sale of the Domain Name to Complainant. Rather unusually, the factual basis for this argument appears in Respondent rather than Complainant’s submissions. Respondent’s submission, as noted above, indicates that Respondent was prepared to sell the Domain Name and that the asking price increased rather dramatically from an initial counter-offer of USD 600 for Complainant’s domain name, up to an offer of USD 25,000 - on the basis that the latter amount was a fair reflection of the replacement cost of a “similarly apt domain name”. This allows the inference to be drawn that this was why the Domain Name was registered and that Complainant’s argument has merit.
On this basis the Panel conclude that the Domain Name was registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
Respondent bases its complaint of Reverse Domain Name Hijacking principally on two separate allegations:
(a) first, that the complaint was brought in bad faith because Complainant knew or should have known at the time it filed the Complaint that it could not prove that the Domain Name was registered in bad faith;
(b) secondly, that Complainant has harassed and disrupted Respondent’s business operations prior to the Complaint being filed and has omitted such evidence.
In terms of the first allegation, it must fail because the Panel has found that the Complaint is successful and was thus properly brought. In terms of the second allegation, it has no basis because Complainant alleged that Respondent had improperly acquired the Domain Name and took steps to address that situation. A party which take steps to protect its perceived rights would see this as necessary enforcement action rather than harassment. There is no reason under the present circumstances to conclude that Complainant was not reasonably entitled to take such steps.
In any event, the Panel notes that the present decision does not foreclose any court claims Respondent may have under national law. 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 Domain Name be transferred to the Complainant.
Clive L. Elliott QC
Sole Panelist
Date: June 22, 2016
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