The Complainant is Foodcube Technologies Inc., of Cincinnati, Ohio, United States of America, represented by Dinsmore & Shohl LLP, United States of America.
The Respondent is Registrant : Domain Administrator, Foodcube Takeaways, of Johor, Malaysia, represented by itself.
The disputed domain name <foodcube.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2009. On July 14, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On July 14, 209, Moniker Online Services, LLC transmitted by email to the Center its verification response providing the registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 17, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Response was filed with the Center on August 9, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on August 21, 2009. 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 August 20, 2009, the Complainant submitted a Supplementary Statement. By email dated August 24, 2009, the Center acknowledged receipt of the Complainant's supplemental filing, and pointed out that the Rules do not provide for the parties to make supplemental filings as of right. The Center advised that it would be a matter for the Panel in its discretion to decide whether the supplemental filing should be admitted.
The Complainant is an American company, incorporated in the State of Ohio on April 27, 2007.
According to the Complaint, the Complainant markets commercial software and hardware that allow consumers to order and pay for food from restaurants, shops, concessionaires, and other retailers, by using an online Internet service, a computer kiosk or a mobile phone. Customers are able to input an order at a touchscreen computer kiosk, paying by credit or debit card and then moving on to an “express pickup” line. A mobile telephone device offers a similar electronic order system with one-touch payment processing.
Annex 5 to the Complaint was the only document produced with the Complaint which showed how the Complainant markets its product. The document referred to the Complainant as “Foodcube” (which the Complainant says is an invented word), and referred at one point to “the branded foodcube touchscreen kiosk”. However, the document featured more prominently a logo device, consisting of the letters “Fd” immediately above the expression “foodcube”, both in white lettering superimposed over a dark square. The expression “foodcube” was written in much smaller font than the “Fd”. At the top right hand corner of the dark square, there was depicted a fork, a spoon, and a knife.
Not long after it was incorporated, the Complainant designed and launched a website at “www.fdcube.com”. (It says that it chose that domain name because the Domain Name was unavailable.) The Complainant operated that website for some (unspecified) period, but it says that it has now temporarily suspended its use of the website because of the Respondent's alleged “mimicking” of the Complainant's website, and the Respondent's “general disruption of Complainant's business”.
The Complainant has made application to the United States Patent and Trademark Office (“USPTO”), to register FOODCUBE as a trademark covering various goods in international class 9. The application has not yet proceeded to registration.
The Panel's check on the electronic database maintained by the USPTO shows that the application was filed on October 5, 2007, on an “intent to use” basis, with no stated “first use” or “first use in commerce” dates.1
On June 10, 2008, the USPTO issued a Notice of Allowance, giving the Complainant six months within which to file either a statement of use or a request for an extension of time for so doing. The USPTO database shows that the Complainant did file evidence of use, but that that evidence was rejected by the USPTO's examiner, generally on the ground that the evidence, while showing use of the expression “foodcube” in advertising materials, did not sufficiently show use of the claimed mark on the goods themselves, or on a label or packaging for the goods, or on a display associated with the goods. The latest position appears to be that the Complainant has been granted a final extension until January 30, 2010 to file the required evidence of use.
The Domain Name was first registered with the present registrar, on April 25, 2006, although there appears to have been an active website at “www.foodcube.com” going back to at least 2003. (Webpages from those early days were not produced by either party, and they were not available when the Panel attempted to access them on the Wayback Machine at “www.archive.org”.)
The first evidence of ownership of the Domain Name since its April 2006 creation date, was a WhoIs printout dated October 1, 2007, showing the then-registrant as Tan Teo Ang, with an address and telephone number in Batu Pahat, Johor, Malaysia. The Complainant says that as at October 1, 2007, the Domain Name resolved to a pornographic website at “www.shaggle.com”.
On October 1, 2007, the Complainant's representative sent an email to Tan Teo Ang enquiring if he would be willing to transfer the Domain Name. The email asserted that the Complainant had trademark rights in the name “foodcube”, and alleged that the website which was then operating at the Domain Name did not relate in any way to a legitimate business concern “under governing US intellectual property laws”.
The Complainant did not produce a copy of Tan Teo Ang's response, but summarized the Response by saying that Tan Teo Ang said that he would transfer the Domain Name if the Complainant could demonstrate its rights in the claimed “foodcube” mark. The Complaint says that when Tan Teo Ang was presented with evidence of the Complainant's use of its mark for its business, Tan Teo Ang refused to transfer the Domain Name.
The Complainant's representative then sent two “cease and desist” letters to Tan Teo Ang, both dated November 20, 2007. The second letter dated November 20, 2007 appears to have been sent in response to an email from Tan Teo Ang, which was presumably sent in response to the first letter from the Complainant's representative (Tan Teo Ang's email was not produced with the Complaint).
The first letter dated November 20, 2007 claimed common law rights in a “foodcube” mark, and recorded Tan Teo Ang's earlier promise to “give up this name free of charge” if the Complainant could demonstrate that it owned a FOODCUBE trademark. The letter went on to advice that if Tan Teo Ang did not agree to transfer the Domain Name to the Complainant, the Complainant would initiate an administrative proceeding under the Policy. The letter stated:
“The fact that you registered the domain name before Foodcube Technologies gained trademark rights for the name “Foodcube” is irrelevant under WIPO's decisions, which consistently find that ‘the registration of the domain name before the trademark registration does not prevent a finding of confusing similarity' under governing rules.”
The letter concluded by asserting the Complainant's belief that it would be able to obtain a clear cut decision in its favor if it were forced to file a proceeding under the Policy.
The second November 20, 2007 letter from the Complainant's representative responded to an argument apparently made by Tan Teo Ang that he had a superior claim to the Domain Name because he had registered the Domain Name in 2006. The Complainant's representative responded:
“WIPO decisions uniformly reject this view, and find that the date of registration does not confer a superior claim against a trademark holder when the domain name holder is not using the domain for any legitimate, bona fide business purpose.”
The Complainant's representative then referred to a number of panel decisions under the Policy. The first reference, to the case of Centron GmbH v. Michele Dinoia, WIPO Case No. D2006-0915, was accompanied by the following quote from that decision: “In other words, whether the trademark was registered before the disputed domain name is irrelevant to ‘confusing similarity'.”
The second November 20, 2007 letter referred to various claims which Tan Teo Ang had apparently made by way of justification of his registration and use of the Domain Name. First, Tan Teo Ang had apparently referred to a pet toy which had been marketed under the name “Buster FoodCube”. The Complainant's representative expressed skepticism at any claim that Tan Teo Ang had been involved as a distributor of, or in some other legitimate way with, that product (if that had been the point of Tan Teo Ang's reference to the product). The Complainant's representative also rejected a suggestion (apparently made by Tan Teo Ang) that the latter had been using the “foodcube” name on a website at the Domain Name since August 2006. The Complainant's representative referred to a web page archived at “www.archived.org” (to which Tan Teo Ang had apparently referred), and noted that the particular web page belonged to a design company based in Denmark. Finally, the Complainant's representative noted that only the previous night, Tan Teo Ang had revised the content of the website at the Domain Name by deleting the pornographic material.
The Complainant says that on November 22, 2007, the Domain Name was transferred to an Australian company called Oasis Vending Pty Limited (“Oasis”), and was transferred again on April 21, 2008, this time to “Teo Ang Tan”, with a different address in Johor, Malaysia from the person who was the registrant as at October 1, 2007, but with the same telephone number as that registrant.
The Complainant says that the Domain Name was again transferred on April 22, 2008, this time to “: Foodcube Takeaways”, with a different address and telephone number, but both in Batu Pahat, Johor, Malaysia.
One day later, on April 23, 2008, the registrant of the Domain Name changed again, this time to the Respondent. The registrant's address remained the same as that of the immediately preceding registrant – the only changes appear to have been in the registration “privacy” number (which changed to 1349920), and in the telephone number (which reverted to the number listed in the Whois particulars for the Domain Name as at October 1, 2007).
After the Domain Name was registered by the Respondent on April 23, 2008, the Respondent created a website at the Domain Name (“the Respondent's website”). The Complainant produced a copy of the Respondent's website as it stood on June 4, 2009. The home page was prominently headed: “Foodcube – bringing you delicious takeaways since 2006”. Much of the text on the Respondent's website was in the Chinese language, but there were also pictures of various takeaway dishes and some English text (including, for example, “Foodcube Home Deliver and Pick Up”, and <Foodcube.com> is Batu Pahat's most comprehensive online home and office delivery service …”). There was a telephone number for site visitors to place telephone orders. Orders could also be placed by email.
The Respondent's website as at June 4, 2009, contained a statement:
Our food delivery service is currently only available from within Malaysia. We plan to open up the service to additional countries in the future, so please stay tuned.”
There was also a section for restaurant owners, which invited the owners to introduce their restaurants “to our hundreds of users”. The Respondent would provide delivery and processing services for the restaurants, at specified rates.
Interspersed amongst the Chinese language text on the Respondent's website as at June 4, 2009, were various English language statements which appear to be statements posted by site visitors on various earlier dates going back, in the case of the oldest postings, over one year. These postings generally appear to have been food-related.
The Complainant alleged that the Respondent's website did not appear to work, and that the “takeaways” business purportedly operating at the Respondent's website was non-existent – a sham. In support, the Complainant referred to a “Google translator” translation of some of the Chinese language text on the Respondent's website as at June 4, 2009, which the Complainant alleged consisted of non-sensical gibberish. (The Google translation of one piece of text which the Complainant proffered read:
“US researchers found that women eat too many sweets, will accelerate the aging of cells, but also the birth of white hair. This is because sugar is acidic foods, alkaline body fluids of a large number of sugar will become neutral or weak acid to cell senescence, leading to white hair turn yellow. Therefore, women should try to eat less sweets.”)
The Complainant asserted that the Respondent's website has created actual confusion among customers looking for the Complainant's website (the Complainant referred to “dozens of prospective customers” who, searching for the Complainant on the Internet, had entered the Domain Name and come away confused about whether the two entities were related). The Complainant did not identify anyone who had allegedly been confused.
On September 17, 2008, the Complainant's representative sent a cease and desist letter to the Respondent. The letter sought the immediate transfer of the Domain Name. In the letter, the Complainant's representative pointed out some apparently false aspects of the Respondent's website, including the claim that Foodcube Takeaways had been delivering food since 2006. The letter alleged that the business apparently conducted through the Respondent's website was not even in operation, but was designed to confuse visitors who might be searching for the Complainant.
By June 30, 2009, the content of the Respondent's website had changed. The new content was not easy to follow, but it appears to have consisted of critical commentary on certain Yahoo statistical tools.
By July 10, 2009, the content of the Respondent's website had changed again. Beneath a large heading “Foodcube”, there was a news item relating to an apparently looming shortage of shark meat. One could click on a number of links to other news stories, which generally appear to have been concerned with food. However, on one side of the web page, there were displayed links to various adult-type websites, including adult chat rooms. The site visitor could choose a location, and click on various other options. The page produced by the Complainant showed the location “Cincinnati” beneath the heading “Located near”, but it is not clear whether that particular location appeared automatically (for example, as a result of the Respondent's website “recognizing” the location of the Complainant when it visited the Respondent's website).
The Complainant found no record of registration of any “Foodcube Takeaways” business registered with the Companies Commission of Malaysia. (The Respondent acknowledges that no such company is registered, explaining that its business revenues have not reached the point where registration is required.)
The Complainant has not licensed the Respondent to use the Complainant's claimed “Foodcube” mark, or to register the Domain Name.
The Response was filed by one Cheng Sing, of the same address as that of the Respondent named in the Complaint. Mr. Cheng acknowledged that he is the person behind “Foodcube Takeaways”.
The Respondent stated that the Respondent's website is his online presence for his food delivery business, and that he has been using the Respondent's website for food-related postings, including photographs of Malaysian food dishes, “from the beginning”. The Respondent also stated that he has been using various “@foodcube.com” email addresses, on various websites, for years (for example, he owns the email address “email@example.com”), and that he has been commonly known by the Domain Name at various top sites compiled by Alexa (referring to the website at “www.alexa.com/topsites”). He operates a blog at “www.twitter.com/foodcube”, and he claimed to have over 300 followers.
With reference to the Chinese language text on the Respondent's website as at June 4, 2009, which the Complainant described as “non-sensical gibberish”, the Respondent explained that the “news snippets” were picked up from various Chinese news sites related to food and health. The Respondent denied that the original copy was “gibberish”.
Certain other postings on the Respondent's website which the Complainant had referred to, were explained as not having been published on the Respondent's website: as the Respondent put it in the Response: “It was a widget showing content from my twitter.com/foodcube account.” The Respondent stated that the screenshot which the Complainant produced was in fact taken from content posted on “www.twitter.com/foodcube”, which the Respondent has been using to post third-party news snippets and photographs.
The Respondent stated that he does not need website visitors to the Respondent's website from countries other than Malaysia, as his food delivery business is confined to his home town.
It was the Respondent's “webmaster”, Mr. Tan Teo Ang, who in 2007 redirected all non-Malaysian visitors to the adult website at “www.shaggle.com”. That website was not the Respondent's website, and he did not make any money from the redirection.
The Respondent reproduced a copy of an email from the Complainant's representative dated October 3, 2007. The email sought the Respondent's price for a sale of the Domain Name. The email did not identify the Complainant's representative's client.
The Respondent asserted that his “webmaster” thought this was an email from the operators of the Australian website at “www.foodcube.com.au”, and contacted the owner of that website, Oasis, to verify the authenticity of the enquiry. The Respondent says that Oasis subsequently registered the trademark FOODCUBE in Australia, and demanded the transfer of the Domain Name to it. To avoid legal proceedings, the webmaster then made the following arrangements:
1. He changed the registrant in the WhoIs particulars for the Domain Name to “Oasis Vending Pty Limited”, without actually transferring the Domain Name to Oasis.
2. He redirected all non-Malaysian visitors to the Respondent's website, to the website at “www.foodcube.com.au”, free of charge.
The Respondent stated that during the period the above arrangements were in place, he continued to use an “@foodcube.com” email address, and continued to serve all Malaysian customers who visited the Respondent's website.
The Respondent summarized the ownership of the Domain Name since 2006 as follows:
1. Tan Teo Ang was the registrant from April 25, 2006 to November 22, 2007.
2. Oasis was the registrant from November 22, 2007 to April 21, 2008.
3. Foodcube Takeaways has been the registrant since April 21, 2008.
The Respondent said that Oasis demanded that the Domain Name be transferred to it in April 2008, but that, as he had been using an “@foodcube.com” email address for a long time, he could not part with the Domain Name. Accordingly, he changed the WhoIs registrant particulars to himself, and started actively using the Domain Name.
More recently, the Respondent decided to change the Respondent's website to an organic food delivery website. The Respondent's website was “handed over to the webmaster for redesign” when that decision was made, and the July 10, 2009 screenshot produced by the Complainant was taken during a “layout testing period” which only lasted a few days.
The Complainant contends:
1. The Domain Name is identical to the FOODCUBE mark in which it has rights.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) The Complainant has not licensed the Respondent to use its FOODCUBE mark or to register the Domain Name,
(ii) The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The creation of the fictitious entity “Foodcube Takeaways”, and the sham website, does not constitute a bona fide offering of goods, as the Respondent was fully aware of the Complainant's business model and rights in its mark before the Respondent registered the Domain Name, and the Respondent deliberately created the Respondent's website to be substantially similar to the Complainant's line of business in order to divert Internet traffic intended for the Complainant.
(iii) The Respondent's use of the Domain Name creates the false impression to visitors to the Respondent's website, that the Respondent could be a competitor of the Complainant. Where a respondent's use of a disputed domain name creates direct competition with a complainant's business, such use cannot constitute a bona fide offering in connection with the disputed domain name.
(iv) The Respondent's use of the Domain Name cannot be categorized as a legitimate non-commercial or fair use of the Domain Name. Neither the fictitious Foodcube Takeaways business nor the use of the Respondent's website to display pornographic material could fall within that category of use.
(v) The Respondent has used the Domain Name to divert consumers and to tarnish the Complainant's mark (citing Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636).
(vi) The Respondent cannot argue that it has been commonly known by the Domain Name. The Respondent did promote a service called “Foodcube Takeaways”, but that was nothing more than a sham creation designed to increase consumer confusion and disrupt the Complainant's business.
3. The Domain Name was registered and is being used in bad faith, having regard to the following matters.
(i) The Respondent had actual or constructive knowledge of the Complainant's rights in its “foodcube” mark when the Respondent registered the Domain Name on April 23, 2008. That is sufficient to establish the Respondent's bad faith.
(ii) The actual Respondent is Tan Teo Ang or someone acting in concert with him or within his control, and the actions of Tan Teo Ang should be attributed to the Respondent. In October 2007, Tan Teo Ang said that he would transfer the Domain Name if the Complainant could demonstrate its rights in the mark. However, when presented with evidence of the Complainant's extensive use of the mark for its business, Tan Teo Ang refused to assign the Domain Name to the Complainant. Such actions imply that the Respondent registered the Domain Name primarily for the purposes of selling it to the Complainant for a profit (citing Desert Schools Federal Credit Union v. Symlink Communications LLC, WIPO Case No. D2001-0528).
(iii) The Respondent registered the Domain Name primarily to disrupt the Complainant's business. The Respondent's non-existent service bears a striking resemblance to the Complainant's business, and amounts to a calculated, direct attack on the Complainant, its customers and prospective customers, and its goodwill. The Respondent's actions have diverted the Complainant's customers to the Respondent's website, and have tarnished the image the Complainant has tried to cultivate.
(iv) The Respondent registered the Domain Name to prevent the Complainant from reflecting its trademark in the Domain Name. The Respondent (including prior registrants of the Domain Name) engaged in multiple transfers of the Domain Name to and among registrants, using privacy shields, and at least one fictitious registrant (“Foodcube Takeaways”). Those actions were designed to evade identification, and reflect a pattern of efforts to frustrate the Complainant's use of a mark in which it has trademark rights. (The use of fictitious entities and pseudonyms to evade identification supports a finding of bad faith – Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258).
(v) The Respondent's use of the Domain Name intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the “foodcube” mark in which the Complainant has rights. The Respondent was fully aware of the Complainant's mark before he registered the Domain Name. The Respondent made no use of the Complainant's mark in any manner until he decided to mimic in large part the Complainant's business by creating the fictitious “Foodcube Takeaways” website. The Respondent benefits from increased Internet traffic to the Respondent's website and the Respondent's most recent use of the Domain Name appears to contain advertising links and/or links to other paid services, from which the Respondent likely will benefit. Such conduct supports the inference that the purpose of the Respondent's diversion of traffic from the Complainant to himself is the Respondent's own commercial gain.
(vi) Use of a disputed domain name for the establishment of a website containing pornography and/or sex links can constitute bad faith where the respondent intends to misappropriate a complainant's recognition for the respondent's own ends (by substantially increasing Internet traffic to the respondent's website (citing Sound Unseen Limited v Patrick Vanderhorst, supra)).
(vii) The Respondent's failure to respond to the Complainant's cease and desist letter is a further indicator of the Respondent's bad faith.
The Respondent contends:
1. The evidence shows that the Complainant does not hold exclusive rights in any FOODCUBE mark. First, the Complainant did not invent the term “foodcube”. That expression first appeared on the Internet in 1998 as a dog toy, and the dog toy is still available for sale today (referring to the website at “www.bustercube.com”). Moreover, the expression “foodcube” has been associated with vending machines since 2002, and the word or its derivatives have been registered by various parties in various domain extensions (e.g., <foodcube.com.au>, <foodcube.eu>, <foodcuber.com>, and <foodcubes.com>). The two last-mentioned domain names were created respectively in 2003 and 2005.
2. The Complainant holds a number of inactive domain names in addition to the <fdcube.com> domain name. These include <foodcube.net>, <foodcube.org>, <foodcube.info>, <foodcube.biz>, and <foodcubetechnologies.com>. <foodcube.us> is still available for registration.
3. The Complainant has been using “FDCUBE” as its business mark.
4. FOODCUBE is a registered trademark in Australia, under registered number 1196998 lodged on September 3, 2007.
5. If an online presence was important to the Complainant, why would it register a bunch of domain names none of which is active? Why would the Complainant take down its own website purely due to alleged confusion over the Domain Name?
6. The Complainant is not commonly known by the name “foodcube”, and the Complainant's business is confusingly similar to that operated by the proprietor of the website at “www.foodcube.com.au.”
7. The Complainant's business is not related to food delivery, but is concerned with computer system design services, and custom computer programming services.
8. No person in the world has any right to a word. “Foodcube” could be a vending machine, a food delivery service, or a dog toy.
9. The Respondent has a right or legitimate interest in the Domain Name, having regard to the following matters:
(i) The Respondent has been using the Respondent's website to post photographs of local Malaysian food dishes for a long time.
(ii) The Respondent has been using various “@foodcube.com” email addresses for years, on various websites. The Respondent has been commonly known by the Domain Name at various top websites compiled by Alexa.
(iii) The Respondent has been actively promoting the Respondent's website for a long time, and has a legitimate interest in the Domain Name even if he has acquired no trademark or service mark rights. The Complainant's business is in the United States, while the Respondent's food delivery business is only available in his home town.
10. The Domain Name was not registered, and has not been used, in bad faith:
(i) The Complainant must demonstrate registration and use in bad faith. To establish registration in bad faith, the Complainant, which bears the burden of proof, must ordinarily show that the registration was undertaken with knowledge of the Complainant and its mark. When the Respondent registered the Domain Name in 2006, the Complainant's business was non-existent, and it had no trademark rights (citing Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183). The Complainant did not even own a domain name registration or claim a web presence prior to the Respondent's registration of the Domain Name.
(ii) Pages archived on the Wayback Machine at “www.archive.org” show that the Respondent has been using the Domain Name for food-related postings from the beginning. The items from Chinese news sites which were posted on the Respondent's website were neither non-sensical nor gibberish. The Complainant's translation was inaccurate.
(iii) When non-Malaysian visitors were temporarily redirected to the website at “www.shaggle.com” for a few months prior to April 2007, the Respondent did not make any money from the redirection.
Without obtaining any leave from the Panel, the Complainant submitted a 15 page, 60 paragraph supplemental submission (with a number of annexures), on August 20, 2009. The Complainant submitted that the Policy and the Supplemental Rules allow a complainant to respond to certain facts and matters raised by a respondent in its pleading (citing Playboy Enterprises International Inc. v. Asia Sun, WIPO Case No. D2005-0767).
In this Panel's view, there is no such broad right for a complainant to file a supplemental filing, let alone one of the size and repetitive nature of that submitted by the Complainant in this case. The Policy provides for a summary, expedited process, in which each party is permitted to submit one filing. Word limits are prescribed in the Supplemental Rules, and the clear intent of the Policy is to have the administrative proceeding resolved promptly on the basis of the parties' single submissions. UDRP panels do have a discretion to admit supplemental filings, but that discretion is normally only exercised in cases where some new circumstances have arisen since the complaint was filed, or a respondent raises matters in its response which the complainant could not reasonably, and with due diligence, have included in its original complaint. The Playboy Enterprises decision cited by the Complainant does not stand for any different proposition: there, the three-member panel accepted a supplemental submission raising material matters which the Complainant could not have included in the complaint.
There is nothing of that sort here. The supplemental filing consists almost entirely of repetition of arguments already advanced in the Complaint. The Panel therefore declines to admit the Complainant's supplemental filing.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving each of the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“…decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Because of the view to which the Panel has come on the issue of bad faith registration (Section 6E of this Decision), the Complaint must fail. It is therefore unnecessary for the Panel to make any findings under this heading.
Again, because the Panel finds that the Complaint fails on the bad faith registration issue, it is unnecessary to make any findings on this part of the Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line 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 [the respondent's] website or location.
For the reasons which are set out below, the Panel is not satisfied that the Complainant has proved bad faith registration and use of the Domain Name by the Respondent.
(1) From the very early days of the operation of the Policy, it has been universally accepted by UDRP Panels that a complainant must prove not only that the respondent has been guilty of bad faith use of the disputed domain name, but also that the disputed domain name was registered in bad faith. (See, for example, Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003, and the three-member panel decisions in Sustainable Forestry Management Limited. v. SFM.com and James M. Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535, and Jazeera Space Channel TV v A J Publishing, WIPO Case No. D2005-0309)
(2) To establish bad faith registration of a disputed domain name, the complainant must prove that the respondent has “targeted” the complainant or its mark in some way, or at the very least that the respondent had the complainant or its trade mark in mind when it selected the disputed domain name. (See, for example, The Perfect Potion v Domain Administrator, WIPO Case No. D2004-0743, followed by this Panel in Christian Dior Couture v Paul Farley, WIPO Case No. D2008-0008.)
(3) Clearly, the Complainant cannot say that Tan Teo Ang was “targeting” the Complainant or its claimed mark when he registered the Domain Name on April 25, 2006 – the Complainant did not even exist at that time.
(4) It follows that if the Domain Name were treated as having been “registered” for the purposes of paragraph 4(a)(iii) of the Policy on April 25, 2006, the Respondent would have a complete defense to the Complaint. Any proof of bad faith use of the Domain Name after April 2006 could not avail the Complainant, because the proof requirements of Paragraph 4(a)(iii) of the Policy are cumulative – a complainant must prove bad faith intention at the date of registration of the disputed domain name, as well as subsequent bad faith use. No doubt with those considerations in mind, the Complainant relies on the acquisition of the Domain Name by the present Respondent on April 23, 2008 as a new “registration” for the purposes of Paragraph 4(a)(iii) of the Policy. If the Complainant is correct in that, the relevant bad faith registration enquiry date is April 23, 2008.
(5) In the Panel's view, the Complainant is correct in submitting that the relevant registration date is the date on which the Respondent acquired the Domain Name – in this case, on April 22 or April 23, 2008. (See on that point Robotex Inc. v. eDomain.biz, WIPO Case No. D2007-1074; The iFranchise Group v. Jay Bean/ MDNH, Inc / Moniker Privacy Services, 23658, WIPO Case No. D2007-1438, followed by this Panel in Certipost NV v. Virtual Point Inc, WIPO Case No. D2008-1183.) The Certipost case was concerned with a transfer of the disputed domain name from an individual to his own company. The respondent company argued that the transfer should be effectively ignored, as a mere rearrangement of the group business affairs, and that the bad faith registration issue fell to be decided as at the much earlier date when the individual had acquired the disputed domain name. The Panel rejected that approach, noting that the respondent corporation was a separate legal entity from the individual, and that, in circumstances where there appeared to have been bad faith use of the disputed domain name by a party who had earlier registered that domain name in good faith, no injustice would be caused if the transfer of the disputed domain name within the wider business group produced the “side effect” of giving the complainant trade mark owner an opportunity to invoke the Policy which it would not otherwise have had (because it could not show bad faith as at the date of the original registration by the individual). The Panel in Certipost concluded that bad faith registration and use can be established by a complainant, notwithstanding that the original registration of a disputed domain name had been effected in good faith, where:
(i) There has been supervening bad faith of the disputed domain name by the original registrant; and
(ii) The disputed domain name is transferred to another entity within the original registrant's business organisation; and
(iii) That other entity acts in bad faith in acquiring the disputed domain name and in subsequently using it.
(6) In this case, the Panel finds that the Domain Name has probably been under the indirect control of the Respondent, since April 25, 2006. That is in effect what the Complainant is saying when it submits that the Respondent is actually Tan Teo Ang “or someone acting in concert with him”, and it is of course the position taken by the Respondent. The relevant WhoIs particulars support that finding, in that they show that the Respondent's telephone number is the same as that of Tan Teo Ang. (It also appears to be common ground that Tan Teo Ang, the April 2006 registrant, is the same person as Teo Ang Tan, who became the registrant of the Domain Name on April 21, 2008.) The evidence as a whole appears to be consistent with the Respondent's contention that Tan Teo Ang was his “webmaster” throughout the period since April 2006. As such, he presumably acted on the Respondent's instructions given from time to time.
(7) Notwithstanding the Respondent's likely control of the use of the Domain Name since April 2006, the Panel follows the decisions mentioned in subparagraph (5) above, and declines to treat the transfer of the Domain Name from Tan Teo Ang to the Respondent on April 22 or 23 of 2008 as a mere “rearrangement”, which does not count as a “registration” for the purposes of paragraph 4(a)(iii) of the Policy. In the Panel's view, there was a new registration of the Domain Name by the Respondent at that time, and the issue is whether the Complainant has proved that the Respondent acted in bad faith in effecting that registration.
(8) The first point to note on that issue, is that there is no evidence of bad faith use, targeting the Complainant, at any time before the Domain Name was transferred to Oasis on or about November 22, 2007. The redirection of the Respondent's website to the adult website at “www.shaggle.com” has not been proved to have been done with the Complainant in mind: the Complainant only came into existence in April 2007, and it made no application to the USPTO for registration of a FOODCUBE mark until October of that year. The advice apparently given by Mr. Tan in October 2007 that he would transfer the Domain Name to the Complainant if the Complainant could establish trade mark rights in a FOODCUBE mark, appears to have been given gratuitously by Mr. Tan, as at that time he did not appear to be at risk of an order under the Policy directing the transfer of the Domain Name to the Complainant. On the available record in this proceeding, the Panel has reached the clear view that the Complainant could not have proved that Mr. Tan registered the Domain Name in bad faith in April 2006.
(9) In the second of his two letters dated November 20 2007, the Complainant's representative made the following statement:
“You claim that my client, FoodCube Technologies Inc, has United States trade mark rights to the name foodcube, but that you have a superior claim because you registered the domain name in 2006. WIPO decisions uniformly reject this view, and find that the date of registration does not confer a superior claim against a trademark holder when the domain name holder is not using the domain for any legitimate, bona fide purpose. Centron GmbH v Michele Dinoia, WIPO Case No. D2006-0915 (“In other words, whether the trademark was registered before the disputed domain name is irrelevant to ‘confusing similarity'“).”
The Panel regards the second sentence of that statement in particular, as potentially misleading.. It is certainly true that, for the limited purpose of confusing similarity under Paragraph 4(a)(i) of the Policy, it does not matter that a complainant's trade mark registration postdates the registration of the disputed domain name. But it is not necessarily correct to say that the earlier registration of a disputed domain name “does not confer a superior claim against a trade mark holder.” Registration of a disputed domain name before a complainant has acquired any trademark rights is highly relevant on the issue of bad faith registration under Paragraph 4(a)(iii) of the Policy, and is usually dispositive of the case in the respondent's favor. (There are some exceptions to that – for example, where a respondent is aware that the complainant will soon acquire rights in a particular trade mark, and proceeds to register the disputed domain name with a view to trading off the complainant's anticipated reputation in the soon-to-be-registered mark – but we are not concerned here with such a situation.) The letter from the Complainant's representative did refer to the “confusing similarity” issue under Paragraph 4(a)(i) of the Policy in the context of the citation of the Centron GmbH case, but the text went on to cite no fewer than seven other cases where the broad “does not confer a superior claim” assertion was not expressly limited to the application of paragraph 4(a)(i) of the Policy.
(10) Mr. Tan may have been persuaded by the correspondence from the Complainant's representative that he would have no defense to a claim under the Policy. In the Panel's view, that assessment of the position, if it was made, was palpably wrong. As noted above, the Panel is of the view that in October/November 2007 the Complainant could not have proved bad faith registration against Mr. Tan.
(11) The Respondent says that when Mr. Tan received an email from the Complainant's representative in early October 2007, he assumed that the email had been sent on behalf of the proprietor of the website at “www.foodcube.com.au”, namely Oasis. The Respondent says that Mr. Tan then contacted Oasis, which subsequently registered the mark FOODCUBE in Australia in 2007 and “demanded us to hand over [the Domain Name] to them”. (The Panel notes from the online database maintained by the Australian trademark registration authority, IP Australia, that an entity having the same post office box as Oasis did apply to IP Australia to register the mark FOODCUBE THINK INSIDE THE BOX, on September 3, 2007. While the mark applied for was not precisely as the Respondent has described, it did prominently include the expression “foodcube”, and the date of the application is generally consistent with the Respondent's story.)
(12) By November 20, 2007, Mr. Tan would have known that the Complainant was behind the communications from the Complainant's representative, but the Panel cannot say that the Respondent's explanation for the transfer to Oasis is implausible. The Australian Oasis Group clearly had an interest in a trade mark incorporating the expression “foodcube”, and the arrangements with Oasis which the Respondent describes in the Response may have been put in hand before Mr. Tan received the two letters dated November 20, 2007. But even if the registration of the Domain Name in the name of Oasis was a stratagem designed to defeat an anticipated claim under the Policy by the Complainant, there remains a question in this case as to whether such an arrangement, carried out in response to a seemingly unjustified demand for a transfer of the Domain Name, could be regarded as having been carried out in bad faith.
(13) The Complainant does not point to any particular bad faith use during the period between November 22, 2007 and April 21, 2008, when Oasis was the nominal owner of the Domain Name.
(14) The Domain Name was transferred back to Mr. Tan on April 21, 2008, and on the following day was transferred to “Foodcube Takeaways”, with a particular registrant number. That number was altered in the WhoIs particulars on the following day (April 23, 2008), and there was a change in the telephone number. Otherwise, the registrant's name and address were not changed in the April 22 and April 23 changes by which the present Respondent became the registrant of the Domain Name.
(15) That brings us to the question which is at the heart of the case, namely why the Respondent acquired the Domain Name on 22 or 23 April 2008. Did he acquire the Domain Name for one of the bad faith purposes described at Paragraph 4(b) of the Policy, or for some other bad faith purpose involving (in some way) a “targeting” of the Complainant or its claimed mark?
(16) The Panel is not satisfied that the Complainant has shown that the Respondent did acquire the Domain Name for any bad faith purpose. The best evidence of the Respondent's intentions with respect to the Domain Name, as at April 23, 2008, are the screen shots from the Respondent's website as at June 4, 2009 which the Complainant produced. (In the absence of any evidence or submission to the contrary, the Panel will assume that the Respondent's website was in substantially the same form as it appeared on June 4, 2009, from fairly soon after the Respondent became the registrant of the Domain Name in April 2008.) Although the Complainant contends that this was a sham, or fictitious, website, it does not appear to have any of the usual telltale signs of cybersquatting. For example, there do not appear to have been any sponsored links to third party websites from which the Respondent might have been deriving “click-through” revenue, and there was no apparent reference to the Complainant or to any of its competitors. The Complainant attempted to argue that the Respondent's website suggested some connection with the Complainant and its activities, but that submission appears to the Panel to be without merit. The Complainant markets sophisticated computer equipment for the sale of food items from retail locations in North America. There is no evidence of the Complainant having any business or reputation in Malaysia, where the Respondent resides. By contrast, the Respondent's website offered a food takeaway service in one town in Johor, Malaysia, with a pick-up and delivery service. Those services would not have been seen as having the slightest relevance to the Complainant's North American customers.
(17) It is conceivable that the Respondent's website during the period between April 2008 and early June 2009 was a sham, as the Complainant contends. (For example, the claim that the Respondent had been bringing customers takeaway food “since 2006” does not seem to be consistent with the earlier use of the Respondent's website, and the Respondent does not appear to have seriously contested the Complainant's assertion that the service operated through the Respondent's website during this period simply did not work.) But if that was the position, it seems quite plausible that the Respondent may have set up the website as a defensive measure, in a misguided attempt to protect his on-going ownership and use of the Domain Name against claims under the Policy (whether from the Complainant or from Oasis). The Respondent would certainly have “had the Complainant in mind” if that were the case, but should some misguided efforts to create a false (and unnecessary) defence to an unjustified claim under the Policy be regarded as bad faith registration under paragraph 4(a)(iii) of the Policy? In the particular, unusual, circumstances of this case, the Panel is not satisfied that it can or should.
(18) First, the Panel is not satisfied that any of the examples of bad faith registration and use set out at Paragraph 4(b) of the Policy apply. If the Respondent had registered the Domain Name with the intention of selling it to the Complainant at a profit, that intention would presumably have been made clear long before now. The obvious time to raise the prospect of a sale to the Complainant would have been when the Complainant's representative first approached Mr. Tan in October and November of 2007. The response from Mr. Tan did not include any sale proposal, and there is no evidence of any subsequent sale proposal from the Respondent or Mr. Tan. There is no basis in the evidence for any inference that the Respondent's intention was to sell to the Complainant at a profit. Nor could paragraph 4(b)(ii) or 4(b)(iii) apply. As for paragraph 4(b)(ii), the Panel is not satisfied that either Mr. Tan's original registration of the Domain Name, or the November 2007 registration of Oasis as registrant, were effected for the purpose of preventing the Complainant from reflecting its claimed FOODCUBE mark in a corresponding domain name, so it is not proved that those earlier registrations formed part of any relevant “pattern” for the purposes of paragraph 4(b)(ii) (even if it could be said that the relevant conduct was that of the Respondent). Nor is there a sufficient basis in the evidence for the Panel to find that the transfer of the Domain Name back into Mr. Tan's name on April 21, 2008 was effected in order to prevent the Complainant from reflecting its claimed FOODCUBE mark in a corresponding domain name, or that the transfer the following day to “Foodcube Takeaways” was effected with that intent. There is therefore no evidence of a “pattern of such conduct”, as required by paragraph 4(b)(ii). There is no bad faith registration under Paragraph 4(b)(iii) of the Policy, because in the Panel's view the Respondent is not a competitor of the Complainant. The Complainant endeavored to argue otherwise, but its submissions on that point were unconvincing – the parties' respective products, and markets, are poles apart. Nor is it established that the Respondent's intention was to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark (Policy, paragraph 4(b)(iv)). It is difficult to see how the Respondent might have derived commercial gain from increased Internet traffic consisting of users trying to find the Complainant's website. As the Panel has noted, there were none of the usual cybersquatting indicia, such as the presence of sponsored links to third party websites, and there was no other evidence of intent to derive commercial gain from deliberately created confusion. Nor was there anything in the evidence to refute the Respondent's claim that, from the early days after the registration of the Domain Name, he has used an “@foodcube.com” email address. Looked at overall, there is no sufficient evidence of any attempt to trade off the Complainant's name, or off such reputation as the Complainant may have acquired in the United States under a FOODCUBE mark.
(19) At the end of the day, the Panel cannot safely conclude that the Respondent did not acquire the Domain Name on April 22 or April 23 2008 simply for the purpose of restoring the status quo ante (with the exception that he would be the registrant rather than Mr. Tan). That status quo ante included the Respondent's use of the Domain Name for email purposes. The Complainant's real difficulty stems from the fact that this Domain Name was registered before the Complainant even came into existence and, unlike the position in Certipost, there is insufficient evidence of bad faith intent targeting the Complainant, in the “internal rearrangements” made with the Domain Name in the period between November 22, 2007 and April 23, 2008. The onus of proof on this part of the Policy is on the Complainant, and while the matter is not entirely free from doubt, the Complainant has failed to persuade the Panel that the Respondent's action in registering the Domain Name in April 2008 was motivated by any kind of bad faith directed at the Complainant.
For all the foregoing reasons, the Complainant has failed to prove an essential element of its Complaint, and the Complaint must be dismissed.
For all the foregoing reasons, the Complaint is denied.
Dated: September 4, 2009
1 As for the propriety of the Panel conducting its own researches on trademark office records see, for example, Mobile Communication Service Inc. v WebReg. RN WIPO Case No. D2005-1304, footnote 5, and the Center's online Decision Overview document, at paragraph 4.5. The USPTO database entry now displays a claimed first use in commerce as of July 1, 2007.