ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck
Case No. D2014-0206
1. The Parties
The Complainant is Canyon Bicycles GmbH of Koblenz, Germany, represented by Hogan Lovells International LLP, France.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Rob van Eck of Boxtel, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <canyon.bike> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2014. On February 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2014, the Registrar 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 February 13, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 14, 2014.
On February 12, 2014, the Center received an email communication from the Respondent. On February 13, 2014, the Center acknowledged receipt and informed the Respondent regarding the proceeding. On February 14, 2014, the Respondent sent an email communication indicating its willingness to transfer the disputed domain name. On the same day, the Center acknowledged receipt and informed the Complainant of the possibility to submit a suspension request to explore a possible settlement between the parties. On February 20, 2014, the Complainant confirmed that it did not intend to submit a suspension request.
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 February 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2014. The Response was filed with the Center on March 11, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 12, 2014. 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 corporation with its headquarters in Koblenz, Germany and is one of the world’s leading manufacturers of racing, mountain and triathlon bicycles. The Complainant was originally founded in 1985 and has been operating under its present name since 2001. The Complainant distributes its bicycle products worldwide, has agents in ten countries and has subsidiaries in six countries including the Netherlands where the Respondent is based. The Complainant is involved in numerous international cycling events of global repute and has been the recipient of multiple accolades including over thirty “Bike of the Year” awards together with the “Eurobike Award” in 2012.
The Complainant has secured ownership of numerous registered trademark rights in the term “Canyon” used in connection with bicycles in many jurisdictions throughout the world. For example, the Complainant is the owner of International Trademark (word) No. 687879, CANYON, registered on January 2, 1998, for goods and services in classes 11 and 12.
The Respondent is an individual based in the Netherlands. The Respondent states that he is a cyclist and web designer in the cycling industry. The disputed domain name was created on February 5, 2014 at 16:00:07 UTC. The “.bike” generic Top-Level Domain (gTLD) had entered its General Availability period, where domain names became available at standard base registration fees, seven seconds earlier. The Respondent registered the disputed domain name using a privacy protection service.
The disputed domain name points to a website parking page provided by the Registrar which, according to the screenshot provided by the Center, features sponsored listings including one entitled “Mountainbikes”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the Respondent is a sophisticated user of the Internet with a demonstrated interest in, and specialized knowledge of, cycling. The Complainant states that the Respondent’s level of sophistication in both the Internet and cycling is evidenced by information publicly online about the Respondent and notes that a general assessment of the Respondent’s professional and social media websites demonstrates the Respondent’s longstanding personal and professional involvement in both Internet and cycling-related projects. The Complainant adds that the Respondent has been professionally involved inter alia in designing a fitness bicycle, the design of a front bicycle wheel decal and creating an online tool providing a bicycle adjustment service for bicycle shops.
The Complainant notes that the disputed domain name incorporates the Complainant’s CANYON trademark in its entirety and adds that it is a well-established principle that the suffix of a domain name is immaterial when assessing identity or confusing similarity. However, the Complainant also submits that in the present case the gTLD “.bike” reinforces the confusing similarity with the Complainant’s CANYON marks as “bike” refers to the Complainant’s core products for which the marks have been registered.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not an authorized dealer, distributor or licensee of the Complainant and has not otherwise been permitted by the Complainant to make any use of its trademarks. The Complainant contends that the Respondent cannot conceivably assert that he is commonly known by the term “Canyon” in connection with bicycles or that he is using or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the disputed domain name is currently pointing to a registrar parking page displaying pay-per-click (PPC) links to third party websites and contends that such use cannot be considered bona fide or a legitimate noncommercial or fair use as the Respondent is unduly benefiting from the renown and goodwill attached to the Complainant’s mark.
The Complainant submits that in all the circumstances it is inconceivable that the Respondent was unaware of the Complainant’s CANYON mark at the time of registration of the disputed domain name and that there is no legitimate reason which could explain the Respondent’s actions other than an intent to mislead Internet users searching for the Complainant under the “.bike” gTLD. The Complainant notes the wording of the Respondent’s communication with the Center dated February 12, 2014 in which the Respondent inquired whether mediation was available in which “the company pays me for my domain” and states that such attempt to obtain monetary compensation further supports the fact that the Respondent has no real legitimate interest in the disputed domain name and strongly suggests that the Respondent deliberately chose to register the disputed domain name to profit from the Complainant’s renown and goodwill in connection with bicycles and related products.
The Complainant asserts that the Respondent had actual and constructive notice of the Complainant and its rights at the time of registration of the disputed domain name and thus registered it in bad faith. The Complainant contends that use in bad faith is established by the Respondent’s creation of “initial interest confusion” in order to attract Internet users searching for the Complainant’s website and by the fact that the disputed domain name points to a registrar parking website featuring sponsored links to third party websites. The Complainant submits that the Respondent is responsible for such content regardless of whether the links are automatically generated or whether the Respondent himself has profited directly therefrom. The Complainant also asserts that the fact that until recently there was no active use of the disputed domain name does not preclude a finding of bad faith.
The Complainant submits that as the disputed domain name identically reproduces the Complainant’s exact CANYON mark in its unadorned form, and given that this is one of the most famous and distinctive bicycle brands in the world, it is not possible to conceive of a plausible circumstance in which the Respondent could use the disputed domain name without misleading the vast majority of Internet users and in particular those knowledgeable about cycling. The Complainant adds that the Respondent’s concealment of his identity by means of a privacy protection service is another strong indication of the Respondent’s bad faith and his intent to use the disputed domain name abusively.
The Respondent states that he registered the disputed domain name to enlarge his network and “get in (friendly) contact with Canyon.” The Respondent submits that a lot of people in the cycling industry did not know of the forthcoming new gTLDs and he therefore registered some domain names “to protect companies” from domain squatting. The Respondent adds that before he was able to contact the Complainant it filed the present Complaint. The Respondent states that it is his belief that the Parties would have “talked about” the disputed domain name and that the Complainant would have received a transfer thereof without recourse to the Policy. The Respondent asserts that many companies have been content with his actions. The Respondent states that while rules may prohibit a person registering a trademark in a domain name he did this with the best of intentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for the word “Canyon”, including the example cited in the factual background. The Panel therefore turns to the second part of the inquiry and notes that the alphanumeric string in the second level of the disputed domain name incorporates the Complainant’s trademark in its entirety with no additional elements. This is sufficient for the Panel to find identity between the disputed domain name and the Complainant’s trademark as the applicable top-level suffix in a domain name is usually disregarded under this test, except thus far generally in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant subscribes to the principle expressed in paragraph 1.2 of the WIPO Overview 2.0, which it notes is well-established. The Complainant also makes the additional argument that the gTLD in the present case, “.bike”, exacerbates confusing similarity because it describes a core product of the Complainant. The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case. The test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). There is no doubt in the Panel’s mind that the Complainant’s case on this element of the Policy, with which the Respondent does not take issue, more than meets this threshold.
In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions (1) that the Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s trademark; (2) that the Respondent cannot assert that he is commonly known by the term “Canyon” or has made demonstrable preparations to use or is using such term in connection with a bona fide offering of goods and services; and (3) that the disputed domain name is currently pointing to a website featuring PPC links which could not be construed as a bona fide or legitimate noncommercial or fair use. Accordingly the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name.
The Panel notes that the Response is informal in nature, such that it is lacking the Respondent’s certification of completeness and accuracy required by paragraph 5(b)(viii) of the Rules. In these circumstances, the Panel requires to accord this less weight than a fully compliant response. However this may be, the Panel notes that the Respondent’s brief submissions focus on his alleged motivation to register certain disputed domain names “to protect companies from domain squatting” and, in the case of the disputed domain name, to provide the means for establishing contact with the Complainant with a view to enlarging his network. In the Panel’s opinion this does not make out a case in terms of paragraph 4(c) of the Policy, nor can the Panel conceive of any way in which the Respondent’s actions could be considered to have conferred rights or legitimate interests upon him in respect of the disputed domain name. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) 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 trademark 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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
It is clear from the Parties’ respective submissions that they are agreed that the Respondent registered the disputed domain name knowing of the Complainant’s rights and indeed with these in mind. The Respondent expressly acknowledges that he is a web developer and cyclist and that he hoped to be able to make contact with the Complainant through having registered the disputed domain name. The Respondent states that he had a wholly good faith motivation to protect companies such as the Complainant from cybersquatting.
The record does not however support the Respondent’s insistence of a good faith motivation. In particular, the Respondent’s email to the Center of February 12, 2014 indicates that the Respondent was looking to be financially compensated in respect of the registration of the disputed domain name, which if treated as an offer for sale can be evidence of bad faith (see paragraph 3.6 of the WIPO Overview 2.0). Furthermore, the Respondent’s statement that he wished to “enlarge his network” discloses a deliberate and intentional commercial purpose behind the registration of the disputed domain name, given the Respondent’s admitted background as a web developer with interests in the cycling industry. An attempt by a person to improve their commercial prospects through the registration of a domain name which that person knows to correspond to the trademark of another is in the Panel’s view a further indication of registration in bad faith.
Finally, the Panel turns to the website parking page associated with the disputed domain name. It is clear that this is a page created by the Respondent’s registrar rather than directly by the Respondent. However, that page features PPC advertisements, at least one of which appears to the Panel to be directly competitive with the Complainant’s products. On this subject, paragraph 3.8 of the WIPO Overview 2.0 notes the consensus view of WIPO UDRP panels that a registrant will normally be deemed responsible for content appearing on a website at its domain name even if it does not exercise direct control over such content. Where certain links may constitute evidence of bad faith use of the domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of links which profit from trading on third party trademarks. Furthermore, it may not be necessary for the registrant itself to have profited directly under such arrangement if profit or “commercial gain” was made by a third party.
In the present case, the Panel is satisfied that commercial gain will have been made by the operator of the PPC links on the Respondent’s website and that there is no evidence of any good faith attempt on the part of the Respondent to prevent the inclusion of such links. On the contrary, paragraph 9 of the Respondent’s registration agreement demonstrates that the commercial nature of the links provided by the registrar had been brought to the Respondent’s attention. They are clearly described as “an online domain monetization system designed to generate revenue” and the registration agreement required the Respondent to agree to their inclusion on the default setting parked page.
Paragraph 3.8 of the WIPO Overview 2.0 goes on to note that some panels have found that the inclusion of such links may not be a basis for finding respondent bad faith where (1) these are genuinely automated; (2) there is no evidence that the respondent influenced the advertising content; (3) the respondent credibly denies knowledge of the complainant’s trademark; (4) there is no evidence of the respondent previously being put on notice of such mark; and (5) other indicia of cybersquatting are not present. This does not describe the circumstances of the present case, where there is no such denial of knowledge of the Complainant’s mark. Indeed, there is effectively an admission of such knowledge together with the other indicia of cybersquatting noted above. In these circumstances, the Panel considers that it is reasonable to hold the Respondent accountable for the inclusion of the PPC links and to find that this constitutes use of the disputed domain name in bad faith.
Finally, the Panel notes that despite the Respondent’s protestations of a good faith intent regarding the registration and use of the disputed domain name, the central feature of the present case is that the Respondent registered the disputed domain name in the clear knowledge of the Complainant’s rights in its CANYON mark and in no doubt that he had not received the Complainant’s permission to do so. In the Panel’s view, the absence of such permission or indeed any bona fide basis for the Respondent’s actions means that on the facts of this case the Respondent’s alleged good faith intent is irrevocably tainted.
In these circumstances, the Panel finds that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <canyon.bike> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 14, 2014