WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lammert Jan Moerman v. Easyspace Privacy / Andybardill
Case No. D2011-0853
1. The Parties
The Complainant is Lammert Jan Moerman of Weurt, the Netherlands, represented by Simmons & Simmons, the Netherlands.
The Respondent is Easyspace Privacy / Andybardill of Glasgow / London (respectively), United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <jee-o.com> is registered with Easyspace.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 19, 2011, the Center transmitted by email to Easyspace a request for registrar verification in connection with the disputed domain name. On May 19, 2011, Easyspace 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 May 24, 2011 providing the registrant and contact information disclosed by Easyspace, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 27, 2011. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2011. The Response was filed with the Center on June 3, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on June 30, 2011. 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 is a natural person residing in the Netherlands. Since 2003, the Complainant has distributed luxury products including showers, bathtubs, fire baskets and lounge seats, all under the mark JEE-O. The Complainant coined this term based on the shape of his first product which was a shower in the shape of the letter “J” and which also included an O-shaped ring.
The Complainant’s JEE-O products are sold in various countries including the Netherlands, Belgium, Germany, France, Spain, Portugal, South Africa and Curacao.
The Complainant owns the following trade marks for JEE-O: Benelux Trade Mark No. 0749381 filed on January 22, 2004, in classes 6 and 11 and Community Trade Mark No. 005633078 filed on January 9, 2007 in Nice classes 11, 12 and 25.
The Complainant owns various domain names such as <jee-o.nl> (registered on January 26, 2004), <jee-o.eu> (registered on May 15, 2006 and <jee-o-europe.com> (registered on April 6, 2009).
The disputed domain name was registered on March 4, 2009, in the name of a proxy service “Easyspace Privacy”.
The Complainant emailed Easyspace on March 1, 2011, March 7, 2011 and March 10, 2011, each time requesting the underlying registrant details. On March 10, 2011, Easyspace replied saying “[…] if you start the UDRP procedure then we at some stage will be able to remove the who.is protection and this will allow you to get the info you require”.
There has been no active website at the disputed domain name.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is identical to Complainant’s trade mark, disregarding the domain name suffix.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name pursuant to the Policy.
The Respondent has no relationship whatsoever with the Complainant and the Complainant has not authorized the Respondent to use the Complainant’s trade marks.
There is no indication that the Respondent is known by the disputed domain name.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to demonstrate or rebut the prima facie case.
Registered and Used in Bad Faith
The fact that the website at the disputed domain name is not actively used does not prevent a finding of bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel concluded that passive holding of a domain name constituted bad faith in circumstances where, amongst other things, the respondent provided no evidence of any actual or contemplated good faith use by it of the domain name and the respondent had taken active steps to conceal its true identity.
The Respondent in the present case has also failed to provide any evidence of actual or contemplated good faith use of the disputed domain name. Also, even after repeated requests of the Complainant, the proxy service failed to provide the contact details of the ultimate owner of the disputed domain name. While use of a privacy service as such does not indicate registration in bad faith, the proxy service has refused to provide the details of the underlying registrant. This itself is evidence of use of a domain name in bad faith, and likewise it must be held that the disputed domain name was registered in bad faith.
It has been held by various WIPO panelists that the use of a privacy service in combination with the continued concealment of the “true” or “underlying” registrant, may be construed as evidence of bad faith as stated under paragraph 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Respondent registered the disputed domain name in good faith on March 4, 2009. The intention was to provide unique photographic services based on geo-tagged digital photographs. “Jee-o” was selected as an abstraction of “geo”. This service is still under development. An original document created on February 25, 2009 described the service to be offered.
An image of an early version of part of the web user interface was created on April 9, 2009, and was last modified on April 27, 2009.
These documents provide evidence of the Respondent’s demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Given the nature of the service under development by the Respondent, the Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business.
6. Discussion and Findings
A. Consent to Remedy
Paragraph 4.13 of the WIPO Overview 2.0 states that, where a respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone.
The Response in this case includes the following paragraph:
“IV. Consent to Remedy (Optional)
[This paragraph if included informs the Complainant, the Registrar(s), and the Center that the Respondent is willing to pursue a pre-decision settlement option and consents to the remedy requested by the Complainant.]
[6.] The Respondent consents to the remedy requested by the Complainant and agrees to [transfer/cancel] the disputed domain name(s) on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.]”
On June 21, 2011, the Center emailed the Respondent asking whether the “Consent to Remedy” paragraph has been deliberately included in the Response and if the Respondent did indeed consent to the remedy sought. The Respondent did not respond to that email.
The Panel notes that the “Consent to Remedy” paragraph conflicts with the substantive part of the Response which asserts the Respondent’s rights and legitimate interests, disputes bad faith and expressly “requests the Administrative Panel to deny the remedies requested by the Complainant”.
In the above circumstances, the Panel does not find that the inclusion of this paragraph amounts to an “unambiguous” consent to the remedy sought. More likely it arose from the Respondent’s oversight in failing to delete inapplicable parts of the Center’s model Response. Indeed there are a number of square bracketed parts of the Response (both in the “Consent to Remedy” paragraph and elsewhere) which the Respondent has not removed.
Accordingly, the Panel will proceed to render its Decision in this matter.
B. Identical or Confusingly Similar
The Complainant has rights in the mark JEE-O arising from its registered trade marks for that term.
The disputed domain name is identical to the Complainant’s trade mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Respondent asserts that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services for the purpose of paragraph 4(c)(i) of the Policy.
The Respondent claims that his intention was to provide “unique photographic services based on geo-tagged digital photographs”. He claims that the name “Jee-o” was chosen because it is an abstraction of “geo”. He says that the service is still “under development”.
In support, the Respondent relies on two documents:
The first is a Word document with the file name “What we do.docx”, said to have been created on February 25, 2009. It consists of the following paragraph:
“We offer a new approach to cataloguing digital photos in ways that relate to temporal, geospatial and emotional factors – be it a day out in London or four months travelling through South East Asia; to then visualise these catalogues as ‘journeys’; to place these geo-spatially on interactive maps; to share them with others, via social networking technologies, and to use the collection of journey datasets to provide recommendations for personal journey planning and context related products and services.”
The second document is described by the Respondent as an image of an early version of the web user interface. The Respondent claims that the image was created on April 9, 2009, and was last modified on April 27, 2009. The file name for the document is “app design photo drop.jpg”. The image consists of a photo of a beach with a label containing the words “Ko Phi Phi” (a location in Thailand) plus map co-ordinates, which is superimposed on a satellite photograph. There are various graphics such as a view finder and zoom tool. The stylised words “jee-o” and “jee-o Pro” appear on the top of the image.
The Panel notes that there is no date mentioned in either document, nor is there any other evidence verifying the relevant creation dates. The Word document makes no reference to the name “Jee-o” or to the disputed domain name. Nor does the Respondent explain the exact purpose of the Word document, beyond saying it that it was a description of the proposed service.
In the Panel’s view, these two undated documents fall well short of what is required to constitute “demonstrable preparations” under paragraph 4(c)(i) of the Policy. These two documents are discussed further under section 6D below.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
This case is a marginal one.
Given the lack of active use of the disputed domain name, the Complainant understandably based its Complaint on the use of a proxy service, the failure to identify the Respondent and the lack of evidence of good faith use. Yet, although the situation changed once the Respondent had been identified and had filed its Response, the Complainant did not seek to file a supplemental submission (which the Panel has discretion to admit on the grounds of exceptional circumstances - see paragraph 4.2 of the WIPO Overview 2.0) to challenge the Respondent’s case.
Further, beyond identifying a list of countries in which its products have allegedly been sold, the Complainant has not supplied any information (let alone supporting evidence) showing the level of its trading activity or any similar evidence which might have a bearing on the likelihood that the Respondent was aware of the Complainant’s rights at the time of registration of the disputed domain name. Indeed the list of countries supplied by the Complainant excludes the United Kingdom, where the Respondent is located.
On the other hand, the Panel is unconvinced by the Respondent’s explanation of its rationale for registering the disputed domain name.
As mentioned above, the Respondent says that his aim in registering the disputed domain name was to provide photography services based on geo-tagged digital photographs. He claims that he selected the name “Jee-o” because it was derived from the term “geo”. To the Panel, this does not seem like a very plausible reason for that choice of name. In any case, the Panel would have expected to see some detailed evidence showing that this was a genuine name for a genuine project rather than a story designed solely to justify the registration of the disputed domain name.
The Respondent says that the service is “still under development” and he has produced the two documents referred to above, both allegedly created around the time of registration of the disputed domain name. So the Respondent is clearly implying that the development process has continued for some two years. Yet the Respondent has not explained why the alleged process has taken so long. And, if it had in fact continued for that period, the Respondent would surely have much more to show for it than just these two documents, consisting of a single-paragraph undated Word document (which makes no mention of “Jee-o”) and a single undated graphic. Indeed, the Respondent refers to the latter as “an early version” of part of the user interface, yet no later versions have been supplied. Nor has the Panel been provided with any of the many other kinds of documents which a two-year development process might have been expected to generate, such as business plans, contracts, invoices, even emails or other communications with third parties referring to the alleged project.
Further, the Respondent says that, given the nature of the service under development, he and the Complainant are not competitors. But, importantly, the Respondent does not deny that he was aware of the Respondent at the time that he registered the disputed domain name. Surely, if he did not know of the Complainant’s existence, he would have said so and explained why, for example on the basis that he is located in a different country or that he had no connection with the design industry, etc.
Finally, while use of privacy service is not of itself an indication of bad faith (see paragraph 3.9 of the WIPO Overview 2.0), it is noteworthy that the Respondent has not explained why he chose to use such a service, notwithstanding that the gist of the Complaint relates to this issue. If the Respondent selected the service to protect his privacy generally or for some other legitimate reason, then the Panel expects that the Respondent would have spelt this out in the Response. But the Respondent has remained silent. That raises the suspicion that the Respondent’s purpose was to conceal his identity from the Complainant.
Taking all of the above matters together, in particular the lack of credible evidence from the Respondent supporting its version of events, the Panel concludes on balance that the disputed domain name was indeed registered with reference to the Complainant and that – notwithstanding the lack of active use – it constitutes a passive holding in bad faith as explained in paragraph 3.2 of the WIPO Overview 2.0.
For all 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 <jee-o.com> be transferred to the Complainant.
Dated: July 13, 2011