The Complainant is RooFoods Ltd, United Kingdom, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.
The Respondent is Majd Makdessi, Kuwait. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. Several brief emails were received from the Respondent prior to and following the commencement of proceedings. However, no formal Response was filed with the Center. Accordingly, on January 14, 2020, the Center informed the Parties that it will proceed to appoint a panel. The Center appointed William R. Towns as the sole panelist in this matter on January 21, 2020. 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, incorporated in England and Wales on August 3, 2012, operates an app and website based on-demand food delivery service, trading under the name “Deliveroo”. The Deliveroo service has grown rapidly, and the Complainant currently provides services in a number of markets, including the United Kingdom, Europe, Middle East, and Asia. The Complainant also partners with other brands such as FIVE GUYS, ZAASTAR ZAIK, AND SHAKE SHACK. The Complainant has registered the DELIVEROO mark in numerous jurisdictions on various dates between February 18, 2016 and July 30, 2019, which include the United Kingdom, Switzerland, India, Philippines, Brazil, Thailand, Israel, Australia, Hong Kong, China, and United Arab Emirates (UAE). The Complainant also is the owner of International Registration No. 1333570, designated for Japan and Turkey. The Respondent registered the disputed domain name The Respondent on September 30, 2019, contacted the Complainant by email and offered to sell the disputed domain name to the Complainant. The Respondent indicated he intended to make the disputed domain name available for sale to the public should the Complainant not be interested. The Complainant on October 2, 2019, inquired what price the Respondent had in mind. On October 3, 2019, the Respondent replied: “The price is negotiable but what I have in mind is around 10,000 US Dollar.” The Respondent on October 7, 2019, sent this follow up communication to the Complainant: “Reminder. I need to sell it by the end of the month. I already received an offer and awaiting your offer.” It appears that the Respondent also put the disputed domain name up for auction with the Registrar. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical to the Complainant’s DELIVEROO mark. The Complainant asserts that its DELIVEROO mark has acquired a substantial reputation in the markets in which it operates, and is extremely well-known around the world as a result of significant sales and extensive advertising. The Complainant cites global sales revenue of GBP476 million as of year-end 2018, and states that it partners with over 80,000 restaurants and 60,000 delivery drivers. According to the Complainant, the Deliveroo service has been the subject of extensive press coverage. The Complainant provides selected press articles relative to the expansion of the Complainant’s service. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is in no way related to the Complainant, and has not been authorized or licensed to use the Complainant’s marks. The Complainant observes that the disputed domain name does not resolve to any website. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Complainant relates that the Respondent made an unsolicited approach on September 30, 2019, at which time the Respondent explained that the disputed domain name would be offered for sale to the public in the event the Complainant had no interest in the disputed domain name. The Complainant relates that it replied to the Respondent on October 2, 2019, inquiring what asking price the Respondent had in mind. According to the Complainant, on October 3, 2019, the Respondent stated that the asking price for the disputed domain name was “around 10,000 US Dollar”. The Complainant further relates that the Respondent on October 7, 2019, advised the Complainant that the disputed domain name needed to be bought by the end of the month, and that an offer for the disputed domain name already had been received. The Complainant maintains that the Respondent subsequently put the disputed domain name up for auction with the Registrar. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain names, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s DELIVEROO mark is clearly recognizable in the disputed domain name.2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 In the attendant circumstances, the Respondent’s appropriation of the Complainant’s DELIVEROO mark suggests targeting of the Complainant’s mark.4 Top-Level Domains (“TLD”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5 When disregarding the TLD “.me”, the disputed domain name is identical to the Complainant’s DELIVEROO mark. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s DELIVEROO mark. Nevertheless, the Respondent has registered the disputed domain name, appropriating the Complainant’s DELIVEROO mark, and sought to sell the disputed domain name to the Complainant for upwards of USD 10,000. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Respondent registered a domain name appropriating the Complainant’s distinctive DELIVEROO mark, and attempted to sell the disputed domain name to the Complainant at the considerable asking price of USD 10,000. The record in this case demonstrates beyond cavil that the Respondent registered the disputed domain name with the intention of selling the disputed domain name to the Complainant at a considerable profit. Having regard to all of the relevant circumstances, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s DELIVEROO mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s DELIVEROO mark in mind when registering the disputed domain name. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to exploit or otherwise profit from the Complainant’s trademark rights by selling the disputed domain name to the Complainant or to other potential buyers for an amount considerably in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 William R. Towns See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. See WIPO Overview 3.0, section 1.8 and cases cited therein. Id. See WIPO Overview 3.0, section 1.7. See WIPO Overview 3.0 , section 1.11. The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein.
Sole Panelist
Date: February 4, 2020
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