The Complainant is DigiPoS Store Solutions of Burlington, Ontario, Canada.
The Respondent is Hiname Inc. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <digipos.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on February 23, 2010. On February 25, 2010, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain name. On February 25, 2010, eNom, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Center has verified that the Complaint satisfies 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 proceeding commenced on March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 23, 2010. The Response was filed with the Center on March 23, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on March 29, 2010. 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.
The Complainant is a company incorporated in Canada and the owner of the DIGIPOS word trade mark registered in Canada with a priority date of September 18, 2001, the DIGIPOS word and design trade mark registered in New Zealand and Australia with priority dates of October 22, 2004, and the DIGIPOS word trade mark registered in Taiwan and People's Republic of China with priority dates of July 1, 2006 and November 12, 2007 respectively (the Trade Marks).
The Complainant is also the owner of several country level domain names comprising the Trade Marks.
The Respondent is a company incorporated in the British Virgin Islands.
The disputed domain name was registered on October 11, 2005.
The Complainant has been in business designing and offering for sale retail hardware and software products since the late 1990s and is an international organisation with 17 offices worldwide.
The disputed domain name was registered in October 2005. It was first used, in October 2009, in respect of a website set up in competition with the Complainant's business. As of the date of the Complaint, the disputed domain name was being used as a parked domain.
The Respondent offered to sell the disputed domain name to the Complainant on October 27, 2009 for USD 100,000.00.
The Complainant's application for registration of the DIGIPOS trade mark in the US was abandoned on August 25, 2008. The Complainant's trade mark registration for the DIGIPOS trade mark (in Canada) was issued on November 30, 2005, whereas the disputed domain name was registered on October 11, 2005. Therefore the rights of the Respondent in the disputed domain name were established prior to the date of registration of the Trade Marks. The disputed domain name was therefore registered without any trade mark significance.
The Respondent has a legitimate interest in the disputed domain name. The disputed domain name is legally registered under the Respondent's ownership and, since its creation, the “www.digipos.com” website (“the Website”) has undergone various stages of evolution. The disputed domain name has never been used to divert Internet traffic from the Complainant for commercial gain. The disputed domain name is currently used in respect of the provision of a non-profit information service relating to IPOs, which is unconnected with the Trade Marks.
Furthermore, at the time of registration, the Respondent had a legitimate interest in the disputed domain name, and the subsequent registration of the Trade Marks does not make what was once a legitimate interest illegitimate.
The Respondent did not use the disputed domain name in bad faith. The Respondent never listed the disputed domain name for sale in a way that demonstrates an intent to profit from the Trade Marks. The Respondent's request for USD100,000.00 was not really a counter offer but was merely a response to the frequent emails and phone calls asking to buy the disputed domain name.
As for the Website, the Respondent's approach is to establish a non-profit website providing online academic resources relating to IPOs. The Respondent never registered the disputed domain name with the Complainant in mind nor for the purpose of exploiting the Complainant's goodwill. The screenshot of the Website filed by the Complainant is just a page transition implying domain transfer.
The Panel has no hesitation in finding that the disputed domain name is identical or confusingly similar to the Trade Marks. The disputed domain name comprises the Trade Marks in their entirety.
It is trite that, under the UDRP, trade mark rights can be established not just through registration, but also through use. The Complainant asserts that it has been in business since the late 1990s. Furthermore, the priority dates for the Complainant's registrations for the Trade Marks in Canada (September 2001) and Australia and New Zealand (October 2004) predate the date of registration of the disputed domain name by several years. The Respondent appears to be under a misapprehension as regards the priority (filing) date of the Respondent's trade mark registration in Canada.
The Panel also notes that the Respondent has not asserted any trade mark rights in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by several years. There is therefore a likely prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names, and the burden is therefore on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any legitimate trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Respondent has not in the Response filed any evidence to show it has any trade mark rights in respect of the Trade Marks or the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent's claim that it is using the disputed domain name in respect of a non-profit website providing academic resources relating to IPOs does not, on the Panel's assessment of the provided evidence, suffice to establish any rights in respect of the disputed domain name. Further, the Panel would note that, as of the date of this decision, the Website features links to several commercial websites offering IPO related services. Use of a domain name in this manner, by providing links to commercial websites (whether third party sites, or sites in some way related to the Respondent), does not amount to legitimate use of the domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
At the time of filing of the Complaint, in October 2009, the Website offered for sale various software products in apparent direct competition with the software products of the Complainant. The Panel finds, by virtue of such use, the public would likely have been confused into thinking that the disputed domain name has (or had) a connection with the Complainant, contrary to the fact. There was a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
The Website currently features links to various commercial websites offering IPO related services. This is not a case where the Website is making a fair use of the Trade Marks or engaging in any criticism or review. To the contrary, the disputed domain name is currently being used in order to attract members of the public to the Website, thereby causing confusion amongst the public and damage to the reputation and goodwill of the Trade Marks. The Panel would further query the Respondent's timing and rationale for changing the Website to a site offering IPO related information (as well as links to websites offering IPO related services) shortly after the filing of the Complaint. Whilst the Respondent is at complete liberty to establish websites offering IPO related advice, it has failed to furnish any evidence to suggest it has the right to resolve the disputed domain name, comprising the Trade Marks, to such a website.
Further, given the past conduct of the Respondent, and given the tenor of the submissions filed by the Respondent in the Response, the Respondent has provided no evidence to suggest that it might not seek, in future, to change the Website yet again in order to trade off the reputation of the Complainant in the Trade Marks and once again offer for sale software products via the Website.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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 trade mark 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.”
There is clear evidence that the Respondent has offered to sell the domain name to the Complainant for valuable consideration far in excess of the Respondent's out-of-pocket costs directly related to the domain name, for the substantial sum of USD 100,000.00. The Respondent's contentions that it “did not really” make such an offer, and that the offer was only made in response to approaches from the Complainant, do not merit any serious consideration and are rejected by the Panel.
The Panel therefore finds that the Respondent has, by its conduct, fulfilled at least two of the established criteria under the UDRP for establishing bad faith registration and use of the disputed domain name. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <digipos.com> be transferred to the Complainant.
Dated: April 16, 2010