The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Brian Gambrel of Fishers, Indiana, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2017, 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 November 30, 2017 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 5, 2017.
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 December 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2017. On December 23, 2017, the Respondent requested an automatic 4-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for the Response was December 31, 2017. The Response was filed with the Center on December 31, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 12, 2018. 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.
On January 16, 2018, at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties, reproduced below:
"The Panel has reviewed the case file and has decided to accept the Respondent's Supplemental Filing, consisting of its email of January 2, 2018 and the two PDF attachments attached thereto. The Panel notes that the Respondent has requested a finding of Reverse Domain Name Hijacking.
In light of this, the Complainant is requested to make a submission commenting on the Respondent's Response and Supplemental Filing by January 21, 2018. The Respondent may thereafter make a submission responding to the Complainant's submission by January 26, 2018.
The Decision due date is now February 9, 2018."
The Complainant filed a response to Procedural Order No. 1 on January 18, 2018. The Respondent filed a response to Procedural Order No. 1 on January 26, 2018. 4. Factual Background
The Complainant is a mobile game development company based in Helsinki, Finland. It has developed four "freemium" mobile games, namely "Clash of Clans", "Hay Day", "Boom Beach", and "Clash Royale", which are free to download and which generate revenue from in-game purchases. The Complainant was founded in 2010 and is reported to be one of Finland's most profitable companies, with earnings of USD 967 million in 2016.
According to a list provided by the Complainant, it is the owner of a variety of registered trademarks featuring the word mark SUPERCELL and a figurative mark consisting of the word SUPERCELL in a stylized typeface split into three rows of three letters each. The earliest such trademark was registered in July 2011. Specific examples of registered trademarks provided by the Complainant include European Union Trademark no. 9704446 for the word mark SUPERCELL registered on October 29, 2013 in international classes 9, 28, and 41 and United States registered trademark no. 4824684 for the word mark SUPERCELL registered on October 6, 2015 in international classes 9, 41, and 45.
The Respondent is the previous registrant of the domain name . The Respondent claims to have registered on January 31, 1999, although no historic WhoIs record or any other evidence has been produced to verify this. The Respondent claims to have offered goods and services via from its registration date until approximately July 2003. The Respondent says that thereafter it used for email until about December 2012 when it began to use it for access to free education, news and events and calls to action for certain charities. The Respondent has produced email correspondence which indicates that the Complainant purchased from the Respondent in April 2013. This correspondence also indicates that, following completion of the transfer of , the Complainant arranged to provide the Respondent with a temporary email forwarding facility for a period of six months. The Complainant now uses as the domain name for its official website and for its corporate email.
The disputed domain name was created on May 30, 2014. The Complainant has produced historic WhoIs records indicating that in November 2015, October 2016, and August 2017 the disputed domain name was delegated to the nameservers NS01.CASHPARKING.COM and NS02.CASHPARKING.COM. The Complainant provides evidence indicating that these nameservers can be associated with the Registrar's "Cash Parking" scheme which offers a share of advertising revenue between the Registrar and the domain name registrant for advertisements displayed on the associated website.
The registrant of the disputed domain name was initially shown as a privacy service operated by the Registrar. The Respondent was revealed to be the underlying registrant of the disputed domain name following registrar verification by the Center. Prior to notification of the Complaint, the Respondent was informed by the Registrar that its privacy service was being discontinued due to the filing of the Complaint. Between November 27, 2017 and December 4, 2017, the Parties entered into correspondence in which the Respondent pointed out that it had sold to the Complainant, asserted its personal use of the "supercell" name since 1999 and indicated that it did not have bad faith intentions towards the Complainant or its SUPERCELL mark. The Complainant referred the Respondent to the terms of the Complaint and noted that this contained its grounds for challenge to the Respondent's registration and use of the disputed domain name. The Complainant added that it had filed the Complaint because the registrant was hidden and remained unresponsive to the Complainant's earlier contact requests and noted that it was happy to hear out suggestions or thoughts for settlement of the dispute. The Parties were unable to reach a resolution of the dispute via this correspondence and accordingly on December 5, 2017, the Complainant amended the Complaint to include the registrar-identified registrant details.
The Complainant has provided a screenshot of the website associated with the disputed domain name dated November 21, 2017 which shows a page provided by the Registrar advertising its services and stating "This Web page is parked FREE, courtesy of GoDaddy". 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant sets out its rights in various registered trademarks for the mark SUPERCELL including those described in the factual background section above. The Complainant notes that the second level of the disputed domain name is identical to the Complainant's SUPERCELL trademark and asserts that the likelihood of confusion between such mark and the disputed domain name is clear.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and did not register it as a trademark or company name anywhere in the world at the time of applying for registration of the disputed domain name. The Complainant submits that due to the worldwide reputation of the Complainant's SUPERCELL mark it is highly unlikely that the Respondent was unaware of the Complainant and its trademark when registering the disputed domain name. The Complainant notes that it has not licensed or otherwise permitted the Respondent to use its trademark. The Complainant contends that it has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name such that the onus of proof of rights or legitimate interests shifts to the Respondent.
The Complainant asserts that the disputed domain name has not been put to genuine use for several years after its registration. The Complainant notes that the disputed domain name advertises the Registrar's services and states that it is more than likely that the Respondent is being paid for clicks of the advertisement. The Complainant notes the delegation of the disputed domain name in connection with the nameservers NS01.CASHPARKING.COM and NS02.CASHPARKING.COM as described in the factual background section above. The Complainant asserts that such delegation means the Respondent had allocated the disputed domain name to the Registrar's "Cash Parking" scheme where "a significant percentage" of advertising revenue for advertisements displayed on a domain name is shared by the Registrar with the domain name registrant.
The Complainant notes that its main website at "www.m" attracts significant traffic and that 100 million customers play its mobile games on a daily basis. The Complainant asserts that because the disputed domain name and its domain name are nearly identical and that the disputed domain name is the shorter of the two it is highly likely that the disputed domain name is being visited by many intending to visit the Complainant's domain name. The Complainant adds that it is safe to assume that, by virtue of its use of the "Cash Parking" service, the Respondent has received significant commercial gain from Internet users mistakenly visiting the disputed domain name instead of the Complainant's domain name.
The Complainant notes that it has made the domain name famous, that it has invested substantially in its SUPERCELL mark, that such mark is present in all of its games and that it owns all related intellectual property rights and has the exclusive right to utilize its trademark commercially.
The Complainant asserts that the name and mark SUPERCELL was extremely successful and globally recognized at the time when the disputed domain name was registered and adds that while the Complainant attracts millions of visitors the Respondent has not put the disputed domain name to genuine use in over three years and is preventing the Complainant from reflecting its trademark in a corresponding domain name.
In its supplemental filing in response to Procedural Order No. 1, the Complainant contends that its trademark rights predate the registration date of the disputed domain name. The Complainant repeats its assertion that the Respondent has not put the disputed domain name to genuine use in over three years and adds that it appears to have been parked offering links to various websites which it contends has in all likelihood benefitted the Respondent financially. The Complainant adds that "bad faith registration or use of a domain is a much more complicated issue than just clear cut cases where infringing or misleading content is posted on the contested domain / respective website".
The Complainant states that after the Respondent's details were revealed by the Registrar, the Complainant welcomed an amicable resolution to the matter from the Respondent but that the Respondent made no suggestions as to such resolution. The Complainant asserts that "the cost and time efficient approach of the Complainant does not in any way change the facts of the Complaint nor has the Complaint been filed in bad faith." The Complainant concludes that the Respondent has not shown genuine use of the disputed domain name or any legitimate rights to the term SUPERCELL. B. Respondent
The Respondent requests that the Complaint be denied and seeks a finding of Reverse Domain Name Hijacking. The Respondent does not dispute the Complainant's trademark rights but notes that while these are wide in reach, dictionary terms such as that in the disputed domain name are by their nature non-exclusive.
The Respondent accepts that the disputed domain name is very similar to the Complainant's domain name but asserts that it is increasingly difficult for a person to accidently type the disputed domain name into their browser "given today's technology of auto-complete, auto-fill and predictive searches". The Respondent disputes any likelihood of confusion between the disputed domain name and the Complainant's SUPERCELL mark.
The Respondent submits that the Complainant withheld the prior relationship between the Parties from the Panel and asserts that such relationship was legitimate and in good faith. The Respondent states that it had not received any communication from the Complainant prior to the filing of the Complaint despite the Complainant being in possession of the Respondent's email address because the Respondent and the Complainant's COO/CFO had previously conducted "good faith business" by means of such email address.
The Respondent asserts that before it received any notice of the dispute it was maintaining a legitimate non‑commercial or fair use of the disputed domain name for its personal email and had been operating under the name "supercell" in a variety of capacities since 1999. The Respondent produces a timeline which it states illustrates its long-standing history of legitimate rights and interests in the name "supercell" and the disputed domain name.
The Respondent submits that at various times between 1999 and April 2013 it operated under the name "supercell" offering a variety of bona fide goods and services to the public. The Respondent notes that, after having been known as "supercell" for 14 years, it transferred to the Complainant for use in service of the Complainant's trademark. The Respondent reiterates that such information was withheld from the Panel by the Complainant.
The Respondent asserts that the Complainant's screenshot shows that when the Complaint was filed the disputed domain name was parked for free on the Registrar's servers. The Respondent notes that domains using this service are not entitled to any compensation, referencing the Registrar's terms of business as produced by the Complainant. The Respondent states that it wishes to offer as much evidence as possible in the time allotted to illustrate that the disputed domain name has not even received enough traffic to generate statistics, thus refuting the Complainant's theory that many individuals are visiting it instead of the Complainant's domain name.
The Respondent contends that in the three years that it has held the disputed domain name it has never been used to sell competitive third party goods and services or display pay-per-click advertising that directs consumers to competitive third party goods or services, that the disputed domain name has never been used in a manner intended to mislead the public as to its affiliation with the Complainant, that the disputed domain name has never featured any of the Complainant's images, logos, or character representations, and that the Respondent has never solicited the Complainant in an attempt to profit in any way from the disputed domain name.
The Respondent states that the disputed domain name was available to any person to register and that it allowed the Complainant a "non-contractual right of first refusal" to register this for a period of over 13 months before proceeding with its own registration, having determined that neither the Complainant nor anyone else in the world had any interest in registering the disputed domain name. The Respondent states that it registered the disputed domain name in order to continue operating as "supercell".
In its supplemental filing in response to Procedural Order No. 1, the Respondent notes that it wishes to correct two matters covered in its initial submission. First, the Respondent corrects its previous reference to a particular email address to which it addressed correspondence for the Complainant. Secondly, the Respondent notes that the Complainant's trademark might be regarded as an arbitrary mark because it is a dictionary term "put to use for something other than its intended purpose".
The Respondent asserts that its common law trademark rights predate the Complainant's first known filing date for a trademark by more than ten years, citing the United States Lanham Act. The Respondent asserts that it has used the SUPERCELL mark consistently since 1999 for both ecommerce sales and public services with the exception of a 13 month period when the Respondent gave the Complainant ample opportunity to register the disputed domain name.
The Respondent disputes that the Complainant's mark enjoys a high reputation among the general public, indicating that the Complainant has failed to prove that all people across all nations without regard to special classifications now associate the term "supercell" with the Complainant as opposed to an impending thunderstorm capable of producing damaging winds, lightning, hail, and tornadoes.
The Respondent asserts that it has put the disputed domain name into genuine use contrary to the Complainant's submissions, noting that email is considered to be a genuine and legitimate use of a domain name and a critical part of one's operations. The Respondent notes that for a 19 month period after its acquisition from the Respondent, the Complainant itself used principally for email purposes.
The Respondent explains, with reference to its agreement with the Registrar as produced by the Complainant, that it had no control over the Registrar's default settings and parking page advertising and that it was required to agree that the Registrar has the right to operate a parking page should the default setting be maintained. The Respondent states that neither it nor the Complainant can determine how much traffic the website associated with the disputed domain name has received but suggests that the Complainant's concerns can be alleviated by a report from the SEMrush traffic analytics system which it produces and which shows that the disputed domain name has received zero recorded traffic.
The Respondent agrees with the Complainant's contention that the domain name and the disputed domain name are nearly identical, adding that the Respondent has demonstrated the use of the former domain name, being a name corresponding to the disputed domain name, for over 15 years in advance of any notice of the present dispute in terms of paragraph 4(c)(i) of the Policy.
The Respondent challenges the Complainant's certification in the Complaint, in terms of paragraph 3(b)(xiii) of the Rules, that the information contained therein is complete and accurate to the best of the Complainant's knowledge on the basis that the Complainant knew that the Respondent had maintained its personal email account for six months following the transfer of to the Complainant, adding that at the time of such transfer the Respondent explained that due to its lengthy history of being known by such domain name it would need this period to update all business contacts, family, friends and online accounts which were previously associated with it.
The Respondent notes the Complainant's assertion that the Respondent was likely to have been aware of the Complainant when it registered the disputed domain name. The Respondent acknowledges that it was so aware, due to the past history between the Parties.
The Respondent asserts that it is "not guilty" under any of the circumstances disclosed in paragraph 4(b) of the Policy and submits that the Complainant has been unsuccessful in proving the existence of any bad faith acts on the part of the Respondent. The Respondent notes that it had rejected multiple offers to purchase the disputed domain name from two different brokers in the months leading up to the Complaint.
The Respondent states that there are over a dozen organizations around the world operating under the name "Supercell" and argues that these are allowed to use an identical trademark provided that the relative classifications and geographical areas are not in conflict. The Respondent contends that the Complainant may be suggesting to the Panel that by refusing to transfer the disputed domain name to the Complainant, the Respondent has displayed bad faith towards the Complainant. The Respondent indicates that if this logic is combined with the Complainant's repeated reminders that the Complaint could be withdrawn if the Respondent would transfer the disputed domain name "it would appear Complainant may have had ulterior motives for filing this UDRP". The Respondent asserts that the correspondence between the Parties from November 29, 2017 to December 4, 2017 demonstrates the Complainant's bad faith and abuse of the UDRP process because the Complainant made no mention in such correspondence of the Respondent harming its business or diluting its trademark but merely reiterated a desire to acquire the disputed domain name.
The Respondent states that the Complainant has willfully violated paragraph 3(b)(v) of the Rules whereby it is directed to provide all information including contact information based on pre-complaint dealings in sufficient detail to allow the Provider to notify the Complaint as described in paragraph 2(a) of the Rules. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Preliminary Issue: Respondent's supplemental filing
Paragraph 10 of the Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, while Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. While unsolicited supplemental filings are generally discouraged, Panels have discretion whether to accept these, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case.
Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some "exceptional" circumstance) (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 3.0")).
In the present case, the Respondent submitted an unsolicited supplemental filing explaining that it had been unable to meet the deadline for the Response in light of the volume of material with which it was working and timing issues due to the fact that the period in which it was to prepare the Response extended over the holiday season. The Respondent also explained that as the deadline approached, it had decided to stop in the middle of working and "sent you what I had". The Respondent's supplemental filing consisted of an exchange of email between the Parties regarding the completion of the transaction in respect of together with the exchange of email between the Parties dated November 27, 2017 and December 4, 2017. Such supplemental filing was received only a few hours after the deadline for filing the Response expired.
The Panel took the view that the contents of the supplemental filing were potentially relevant to the issues in dispute in that they provided evidence that the Respondent had transferred to the Complainant, a matter which had not been raised in the Complaint. The Panel also took the view that the Respondent's explanation as to why it had been unable to meet the deadline was reasonable, particularly bearing in mind the close proximity in time between the deadline for the Response and the filing of the Respondent's supplemental filing. In all of these circumstances, the Panel considered that the Respondent's supplemental filing should be admitted.
The Panel further determined that it was reasonable for the Complainant to be invited to comment both on the contents of the Response and the Respondent's supplemental filing given that the Respondent had introduced the question of the domain name in each of these and had also made a request for a finding of Reverse Domain Name Hijacking. The Panel took the view that the Respondent should then be afforded an opportunity to comment on any such comments made by the Complainant and for all of these reasons issued Procedural Order No. 1 to the Parties. B. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant has rights in its SUPERCELL trademark as demonstrated by the registered trademarks cited by the Complainant and noted in the factual background section above. The Panel notes that the Respondent does not dispute the Complainant's rights in such mark. Turning to the second part of the inquiry, the Panel notes that the alphanumeric string in the second level of the disputed domain name matches exactly the Complainant's trademark without any additional elements. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's trademark bearing in mind the fact that the applicable Top Level Domain ("TLD") in a domain name, in this case ".co", is typically disregarded in the comparison process (see sections 1.7 and 1.11.1 of the WIPO Overview 3.0).
In these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that such respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions that the Respondent did not register the disputed domain name as a trademark or company name anywhere in the world when applying for registration of the disputed domain name, that due to the worldwide reputation of the Complainant it is highly unlikely that the Respondent was unaware of the Complainant when registering the disputed domain name, and that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name. Although the Response is confused in places and lacking supportive evidence in others, the Panel interprets its essence to be that the Respondent possesses rights or legitimate interests on three different grounds. First, the Respondent indicates that it was the original registrant of the Complainant's domain name from 1999 to 2013 and has used this, being a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services conforming to paragraph 4(c)(i) of the Policy. Secondly, the Respondent asserts that it has been known by the "supercell" name for 14 years even though it has acquired no trademark or service mark rights, or possibly has acquired common law trademark rights. This submission seems to be directed to paragraph 4(c)(ii) of the Policy, namely that the Respondent is effectively asserting that it has been commonly known by the disputed domain name. Thirdly, the Respondent appears to indicate that it is making a legitimate non‑commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue, conform to paragraph 4(c)(iii) of the Policy, by virtue of its use of the disputed domain name for email purposes.
While it may reasonably be inferred from the evidence before the Panel that the Respondent was the registrant of in 2013, when the Respondent agreed to transfer this domain name to the Complainant in return for an unspecified sum of money, there is no independent evidence which demonstrates to the Panel's satisfaction that the Respondent was the original registrant of that particular domain name in 1999. For example, the Respondent produces a "timeline" but does not point to any extrinsic material which would support the key dates which it contains. This evidential deficit is an issue for the Respondent's case on paragraph 4(c)(i) of the Policy because the only material of substance before the Panel which might support the making of a bona fide offering of goods or services under a name corresponding to the disputed domain name is the Respondent's historic screenshots of the website associated with dating from 2003.
For example, the screenshot of July 29, 2003 shows what appears to a website of relatively rudimentary design operating under the banner "S Your Shopping, Searching and Surfing Site" and featuring a table of hyperlinked images labelled "music", "movies", "books", "electronics", "toys", "gifts", "art", "education" and "sporting goods". A further screenshot indicates that by 2013, the associated website for no longer featured commercial activities but had become a compilation of third party news content. The screenshot of the disputed domain name itself, which was produced by the Complainant, shows no commercial activity which could be described as a bona fide offering of goods or services but rather a parking page apparently provided by the Registrar.
Even if the Respondent had been able to demonstrate that it was the registrant of in 2003, the Panel is by no means certain that this fact, together with the screenshots produced, would have been sufficient for the Panel to find that the Respondent was making a bona fide offering of goods and services at that time. As described above, the screenshots themselves are not particularly enlightening and the Panel would have expected greater detail from the Respondent describing the nature of the offering which was being made. There is no evidence as to where and to what content the links on the website actually led and what, if any, genuine goods or services were being offered there other than the general category headings.
As matters stand, therefore, it is unclear to the Panel whether the links on the 2003 screenshots were an actual offering of goods and services or merely links to a third party affiliate scheme. Even if these had indicated some suitable form of commercial activity in 2003 under , it remains doubtful that this would have been sufficient on its own to demonstrate rights and legitimate interests in the disputed domain name itself, this being a new registration dating from 2014. It is important to note that as far as the Panel can tell from the Respondent's evidence, which is incomplete and appears not to be in any chronological order, there is nothing before the Panel to indicate that was being used for a bona fide offering of goods or services between 2003 and 2013 when it was transferred to the Complainant. Nor is there any evidence that the Respondent intended to carry on or continue any alleged prior commercial activity under the disputed domain name itself when newly registered in 2014. In all of these circumstances the Panel finds that the Respondent has not made out its case in terms of paragraph 4(c)(i) of the Policy.
Turning to the Respondent's case in terms of paragraph 4(c)(ii) of the Policy, the Panel notes that it has been provided with no evidence of any substance which indicates that the Respondent has been commonly known by the disputed domain name. For example, there is no evidence that the disputed domain name corresponds to the Respondent's given name, stage name, or other observed moniker. As section 2.3 of the WIPO Overview 3.0 notes, respondents are expected to produce concrete credible evidence of being commonly known by the domain name concerned, such as government-issued ID or sustained examples of secondary material such as websites or blogs referring to the respondent being commonly known by the relevant name. Mere assertions will not suffice.
There is however some support from the evidence for the Respondent's case on rights and legitimate interests under paragraph 4(c)(iii) of the Policy, namely that it is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or target the trademark at issue. Although the Response is somewhat confused on the issue, it does appear to the Panel that the Respondent may fairly claim an interest in the disputed domain name arising from the fact that this is a dictionary word relating to a particular type of storm. While there is no evidence that the Respondent has used the disputed domain name itself in connection with such meaning it is clear that its non-commercial news aggregation website which was operated under the domain name in 2013 makes reference to this meaning by its reproduction of what might be described as a "whirlwind" logo along with the strapline "See What's Spinning".
While the vagueness of the Respondent's submissions on the dictionary nature of the word "supercell" are not conclusive of its rights and legitimate interests in the disputed domain name, greater support for its case on non-commercial use may be found in its explanation that it registered the disputed domain name for use with personal email and in particular to continue a similar use which it had made of prior to selling this domain name to the Complainant. It would have been of assistance to the Panel if the Respondent could have provided direct evidence of such use. In particular, the Panel notes that the Respondent did not make use of any email address configured under the disputed domain name when corresponding with the Complainant.
Nevertheless, the Panel finds that the Respondent's submissions on this topic have the ring of truth to them and they are supported in particular by the evidence that when the Respondent transferred to the Complainant it requested and obtained a six month period in which the email to that domain name would be forwarded by the Complainant to an alternative address of the Respondent's choosing. There is a gap of approximately six months between the conclusion of that period and the registration of the disputed domain name. The Respondent explains that during this period it determined to wait in order to assure itself that the Complainant had no interest in the disputed domain name while noting, if the Panel understands the Respondent's submission correctly, that there was no contractual obligation in the sale transaction requiring it to do so. This strikes the Panel as a reasonable position for the Respondent to have taken which remains consistent with the overall tenor of its case on legitimate non-commercial use.
The Panel accepts that there is a substantive question raised by the Complainant as to the genuineness of the Respondent's alleged non-commercial use of the disputed domain name. The Complainant suggests that the disputed domain name may have been configured for a commercial use which invoked the Registrar's "Cash Parking" service, for the publication of sponsored advertising links, in order to target the Complainant's mark. The Respondent denies this and says that it did not intentionally configure any such links. In these circumstances, the Respondent can probably do no more than to point to its agreement with the Registrar and to produce, as it has done, a traffic scan of the disputed domain name which shows no traffic of the substance which the Complainant insists must be benefitting the Respondent.
The fundamental flaw in this aspect of the Complainant's case is that no evidence has been produced which shows any such "Cash Parking" service in action on the disputed domain name whereby the Complainant's mark was targeted, nor any evidence that the presence of the nameservers referred to means that the Respondent intentionally configured the disputed domain name in this way. The Complainant has an added difficulty due to the fact that its mark is also a dictionary word and is not so strong, in the opinion of the Panel, to have displaced that dictionary meaning in the minds of most people. This means that in appropriate circumstances it would be permissible to use a domain name consisting of the word "supercell" on a "Cash Parking" service provided that this was done exclusively in connection with the relied-upon dictionary meaning (see section 2.10 of the WIPO Overview 3.0 on this topic). While the Respondent does not claim to have done this, it is illustrative of the difficulty which the Complainant faces by merely relying on the fact that the disputed domain name has been delegated in the past to nameservers which refer to "Cash Parking".
The lack of critical evidence in this case from both of the Parties leaves the issues quite finely balanced. Where that is so, the principal requirement upon the Respondent is that it meets the Complainant's prima facie case by way of rebuttal. The Panel is satisfied that it has done this. The requirement upon the Complainant, by contrast, is that it must provide suitable submissions and evidence to tip the balance in its favor, particularly in the context of any attempted rebuttal of its prima facie case. In the present case, the Panel finds that the Complainant has failed to do so despite having been given an opportunity to comment on the content of the Response. It follows that the Complainant has not proved to the Panel's satisfaction that the Respondent has no rights and legitimate interests in the disputed domain name and accordingly the Complaint must fail. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
While, given the failure of the Complainant's case on the second element of the Policy, it is not strictly necessary for the Panel to address this issue, the Panel considers that a brief observation on the topic may be of assistance to the Parties and, in particular, to the Respondent. The Policy requires the Complainant to make the conjunctive showing that the disputed domain name has been registered and is being used in bad faith. The Panel considers that an apparent good faith motivation on the Respondent's part for registering the disputed domain name is arguably present in the Respondent's case despite the difficulties caused by a rather confused, chaotic and "scatter gun" approach to the issues, particularly in the original Response, and a notable lack of supportive evidence.
It is not implausible that the Respondent wished to replace its original domain name with a domain name which it could use for email purposes. Given its past history with the "supercell" name and the presumed absence of a contractual prohibition from operating under such name upon the sale of , this might be said to be indicative of a registration in good faith. On the other hand, the Panel does not necessarily believe that a trademark owner purchasing a domain name would expect the seller to turn around and register another domain name almost identical to one it has just sold; see, e.g., as to the risks this presents, Thule Sweden AB v. Cameron David Jackson,WIPO Case No. D2016-0414. However, as that appears not to have been addressed by the Parties during the sale transaction, it does not tip the case in the Complainant's favor.
However, there is a suggestion, albeit that the evidence is far from conclusive as discussed above, that the disputed domain name may also have been intentionally assigned to the Registrar's "Cash Parking" service in the past and may thereby have been targeting the Complainant's mark. The Respondent's answer to this is merely to say that the website associated with the disputed domain name is effectively under the Registrar's control in light of the Respondent's selection of the default settings. The Respondent should appreciate that ultimately it cannot disclaim its own responsibility for content appearing on such website, nor can it seek to pass the responsibility for such content on to the Registrar merely because the Respondent has availed itself of a free parking service (see section 3.5 of the WIPO Overview 3.0 on this topic). In short, it does not do a party such as the Respondent, which insists in its good faith vis à vis the Complainant, any credit to maintain that it does not have any control of this aspect of the disputed domain name's operation.
Accordingly, the Respondent would do well to take steps to ensure that no advertising links target the Complainant via the disputed domain name and, given the difficulty of permanently suppressing such targeted links from automatically generated content, might consider taking steps simply to remove any and all such content from the website concerned by removing the default settings. The Respondent should take note that as the issues in this case were finely balanced, should future Respondent behavior cast a different light on the Panel's assessment of bad faith, this might give grounds for a panel to accept a refiled complaint (on this topic, see section 4.18 of the WIPO Overview 3.0). Equally, the Respondent should on no account consider itself immune by virtue of the present decision from possible action in other fora if the Respondent uses or continues to use the disputed domain name in any way which might be considered to be targeting the Complainant's rights.
Nevertheless, as matters stand, the Panel is prepared to find for the reasons outlined above that the disputed domain name was not registered in bad faith and further, that there is insufficient evidence that it has been used in bad faith. Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied and the Complaint also fails on this ground. E. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. This term is defined in the Policy as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". It is generally accepted that mere lack of success of the Complaint is not itself sufficient for such a finding. Further discussion as to the nature of Reverse Domain Name Hijacking and the typical circumstances in which it may be found are detailed in section 4.16 of the WIPO Overview 3.0.
In the present case, the Panel considers that the Respondent must accept some responsibility for the fact that the Complaint was filed against it. The Panel reminds itself that the original registrant of the disputed domain name as displayed in the WhoIs record was a privacy service. The Complainant asserts that its correspondence with this registrant went unanswered. This meant that, at the outset of this matter, the Complainant had no way of knowing that the underlying registrant was the Respondent with whom it had a past history. Furthermore, as is demonstrated by the evidence, the Complainant had identified a possible misuse of the Registrar's "Cash Parking" service. These matters were understandably of concern to the Complainant and may have suggested that the Respondent was engaging in cybersquatting behavior.
When Registrar verification revealed that the Respondent was the underlying registrant, the Complainant would have benefitted by exploring the circumstances more fully with the Respondent, particularly as it was already aware that the Respondent had a past connection to the "supercell" name by way of its registration and use of the domain name both for email and web services. Nevertheless, the Complainant's failure to do so does not necessarily mean that it should be treated as having brought the Complaint against the Respondent in bad faith. As outlined above, there was some evidence available to the Complainant which raised reasonable questions regarding the Respondent's behavior and motivation, whether or not the Respondent had previously made good faith use of a similar name. While, upon evaluation of the entire factual matrix, these questions ultimately did not lead to a finding in the Complainant's favor, they demonstrate in the opinion of this Panel a good faith basis for the Complainant's use of the Policy in this particular case.
The Panel has reached this view not without some hesitation, in particular because of the fact that the Complainant chose not to put forward any of the past history and background of its dealings with the Respondent when it amended the Complaint. This might be seen as a lack of candor which does not sit well with the Complainant's certification of completeness and accuracy of the information contained in the Complaint in terms of paragraph 3(b)(viii) of the Rules. However, having given the matter careful consideration, the Panel takes the view that the Complainant genuinely, if mistakenly, believed that these matters had no bearing on the present case due to the manner in which it perceived that the disputed domain name had been used.
In all of these circumstances, the Panel declines to make a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: February 9, 2018
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