WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neways, Inc. v. Miguel Jimenez
Case No. D2012-1298
1. The Parties
The Complainant is Neways, Inc. of Springville, Utah, United States of America (“U.S.”) represented by Workman Nydegger, U.S.
The Respondent is Miguel Jimenez of Orem, Utah, U.S., self represented.
2. The Domain Name and Registrar
The disputed domain name <neways.pro> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2012. On June 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. The Response was filed with the Center on July 13, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on July 26, 2012. 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.
[If necessary, summarize other stages of the administrative proceeding, including extensions granted and orders issued, other proceedings, consolidation of related proceedings, language of the proceeding.]
4. Factual Background
The Complainant owns U.S. Trademark Registration No. 2,431,703 for the mark NEWAYS in connection with aromatherapy oils and deodorant: Registration No. 2,454,358 for the mark NEWAYS in connection with nail care preparations, cosmetics, hair preparations, soaps, detergents, anti-perspirants and other goods in International Class 3: Registration No. 2,471,380 for the mark NEWAYS in connection with nutritional and herbal supplements and a number of other U.S. Trademark Registrations for word marks and design marks that include the term NEWAYS in connection with similar goods.
The Domain Name was registered on December 9, 2011.
5. Parties’ Contentions
The Complainant has been using the NEWAYS mark since at least as early as August 1992 in connection with quality nutritional, personal care and household products. The Complainant offers more than 200 products in more than 23 countries where it has a presence.
The Complainant contends that the Domain Name is identical to its NEWAYS trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Respondent sent the Complainant an email offering to sell the Domain Name to the highest bidder. The Complainant contends that this is evidence of the Respondent’s bad faith. The Complainant also argues that the fact that the web site associated with the Domain Name is being used for no other purpose than to display advertising is also evidence of the Respondent’s bad faith.
The Respondent argues that the Domain Name is not confusingly similar to the Complainant’s trademark because there are numerous parties that own domain names that include the term “neway” or “neways,” as well as numerous business names that include this term. The Respondent contends that the Domain Name is considered valuable and desirable by many businesses, and it would be unfair to those businesses and to the Respondent to award transfer of the Domain Name to the Complainant. The Respondent states that he registered the Domain Name as a “possible company domain idea that was later discarded.” After the Respondent decided not to use the Domain Name, he offered it to several companies, including the Complainant. The Respondent acquired the Domain Name in December, 2011, but did not attempt to sell it until April of 2012. The Domain Name was registered with the Registrar, and was parked through the Registrar. The Registrar displays ads on parked pages as a common practice, and the Respondent did not earn any click-through fees from those ads. The Respondent contends that the Complainant has shown a pattern of illegal conduct in its business, including pleading guilty to selling a dietary supplement that included human growth hormone, and some of its officers being convicted of tax fraud.1
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it owns rights in the NEWAYS mark. The second level of the Domain Name is identical to the Complainant’s trademark.
The Panel finds therefore that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
The Respondent acknowledges that the web site associated with the Domain Name is resolving to a parking page hosted by Network Solutions that is displaying advertising. Thus, it is not being used in connection with a bona fide offering of goods or services. The Respondent has not offered much in the way of evidence that it made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent states that the Domain Name was a “possible company domain idea that was later discarded.” Without any additional evidence of preparations that were made to use the Domain Name in connection with a bona fide offering of goods or services, the Panel is unable to conclude that such preparations were undertaken in this case. The Respondent did not offer evidence that he has been commonly known by the Domain Name. The advertising content on the site cannot be considered a legitimate noncommercial use without intent for commercial gain, even if the Respondent did not collect the click-through fees from the ads. Accordingly, the Panel finds that the Respondent has not demonstrated rights to or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
In order for a complainant to succeed in an action under the Policy, the complainant must demonstrate by a preponderance of the evidence that the respondent has both registered and used the disputed domain name in bad faith. Although the Respondent argues that he acquired the Domain Name for his own use and only after discarding that idea tried to sell it to several different parties, he has not presented any evidence regarding the nature of his proposed use of the Domain Name nor any evidence of negotiations with other parties for the sale of the Domain Name. While there may have been more than one business that would have had an interest in using a domain name including this term, the evidence presented suggests that it is more likely than not that the Domain Name was registered primarily for the purpose of selling the Domain Name to the Complainant. See, e.g., CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 (others besides the complainant may have had an interest in “CBS” mark, but offer to sell domain name for higher than out-of-pocket costs is evidence of bad faith where respondent did not have legitimate interest in domain name). Accordingly, the Panel finds that the Domain Name was registered and used in bad faith pursuant to paragraph 4(b)(i) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Date: August 9, 2012
1 Although the Panel notes these contentions, the Panel finds that they are outside the limited scope of the present dispute and the Policy, and the Panel declines to address them in its substantive findings.