WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Big Fish Sprl v. Gaurav Gadh

Case No. D2014-0791

1. The Parties

The Complainant is Big Fish Sprl of Brussels, Belgium, represented by Kirkpatrick S.A., Belgium.

The Respondent is Gaurav Gadh of Chicago, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <digiprint-usa.com> (the “Domain Name”) 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 May 13, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2014, 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 May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2014. On May 22, 2014, the Center received an email communication from the Respondent. The Response was filed with the Center on June 1, 2014.

The Center appointed Nicholas Smith as the sole panelist in this matter on June 24, 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, headquartered in Brussels, Belgium, is a European e-supplier of accessories, spare parts and software for the digital printing market. The Complainant through its various channels but particularly from its website at “www.digiprint-supplies.com” (“Complainant’s Website”), offers original spare parts for digital printers. According to the Complainant’s Website, the Complainant was founded in 2007 and has over 15,000 active customers.

The Complainant has held trade mark registrations for a figurative mark that contains the image of either a four-leafed clover or 4 squares and the mark DIGI PRINT SUPPLIES (the “DIGI PRINT SUPPLIES Mark”) both in Benelux since September 1, 2009, and as an International trademark (designating the United States and China), filed on May 17, 2010 and registered on April 26, 2011. Notably the DIGI PRINT SUPPLIES Mark (the United States designation of the International trademark) contains the disclaimer “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “DIGI PRINT SUPPLIES” APART FROM THE MARK AS SHOWN”. The Complainant has also applied for the mark for DIGIPRINT (the “DIGIPRINT” Mark) in the EU but this application has not yet been accepted.

The Domain Name <digiprint-usa.com> was created on May 18, 2012. The Domain Name redirects to a website (“Respondent’s Website”) with the title “DIGIPRINT-USA “Ships from U.S.A.”. The Respondent’s Website sells printer accessories and specialises in print heads, which are components of inkjet or digital printers.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s DIGI PRINT SUPPLIES Mark and DIGIPRINT Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the DIGI PRINT SUPPLIES Mark and DIGIPRINT Mark. It owns trade mark registrations for the DIGI PRINT SUPPLIES Mark in the EU and the United States and has applied to register the DIGIPRINT Mark in the EU.

The Domain Name consists of the DIGI PRINT SUPPLIES Mark and the word “-usa” which is a descriptive element. The Domain Name is confusingly similar to the DIGI PRINT SUPPLIES Mark as the dominant part of the Domain Name is the term “digiprint” which is reflected in the Complainant’s DIGI PRINT SUPPLIES Mark.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is using the Domain Name for a commercial website and is misleading consumers who naturally believe that the Domain Name points to a website endorsed by the Complainant. Such use is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Name. Moreover, the Respondent is using a fake address because he has failed to respond to the Complainant’s cease and desist letters further showing a lack of rights or legitimate interests in the Complainant’s mark.

The Domain Name was registered and is being used in bad faith. The Respondent appears to have intentionally attempted to attract Internet users to the Respondent’s Website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark and has also acquired the Domain Name for the purpose of disrupting the business of a competitor. Furthermore, the Respondent has failed to respond to the letters sent by the Complainant, indicating that he is using fake contact details, a further sign of bad faith.

B. Respondent

The Respondent states that he is a re-seller of consumable digital printing products, primarily print heads. The Domain Name is an abbreviation of “digital printing” and there are numerous companies who use the name “digi print”, that either provide printing services or resell items used by the digital printing industry.

The Respondent’s Website only sells digital print heads and does not necessarily compete with the DIGI PRINT SUPPLIES Mark which is registered for specialist printing software, advertising and online sales of digital printing accessories, and repair and technical support services for digital printers.

The Respondent’s company is not using the Complainant’s pictures on their website nor is it using the DIGI PRINT SUPPLIES Mark. It is an independent company that focuses on selling its products in North and South America.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the DIGI PRINT SUPPLIES Mark, having registrations for the DIGI PRINT SUPPLIES Mark as a trade mark in Benelux and the United States (as a designated country of an International trademark). Based on the available records, it is not clear whether the Complainant is the owner of the DIGI PRINT Mark, as the mark has not been registered; the Complainant has made no submissions and put on no evidence as to the existence of any unregistered trademark rights in the DIGI PRINT Mark.

The Domain Name consists of the words in the “digi” and print”, with the removal of the space between these words, the removal of “supplies” and the addition of the term “-usa”. As noted in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the addition of common or descriptive terms typically does not prevent a finding of confusing similarity. As such neither the addition of the word “-usa” nor the subtraction of the descriptive word “supplies” distinguishes the Domain Name from the DIGI PRINT SUPPLIES Mark in any significant way.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s DIGI PRINT SUPPLIES Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 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.” (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the DIGI PRINT SUPPLIES Mark or a mark similar to the DIGI PRINT SUPPLIES Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

The Respondent states that he has used the Domain Name for the purpose of a website that makes a bona fide offering of goods and services. This argument is supported by the content of the website, which appears to be a legitimate website that offers digital printing products, primarily print heads, for sale. The explanation provided by the Respondent for his choice of web page is plausible “digi print” being short for digital printing.

While the assertion of rights or legitimate interests by the Respondent is limited to the website at the Domain Name, the explanation provided by the Respondent for his choice of the Domain Name, supported by the content of the Respondent’s Website is evidence that contradicts the Complainant’s assertions. Furthermore, the Complainant’s assertion that the Respondent is using a fake address is not supported by the record of the proceeding. Finally the Complainant’s assertion that the Respondent is using the Domain Name to mislead customers/in bad faith is addressed below, but in summary the Panel does not think the Complainant has discharged this onus. The Panel finds that Complainant has not established that the Respondent does not have rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 website or other online 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.

The requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The primary submission by the Complainant is that the Respondent has taken deliberate steps to conceal its identity thereby engaging in bad faith. The basis of the Complainant’s submission is that the Respondent failed to respond to any letters of demand sent by the Complainant and therefore has a false address. This submission is incorrect. The Respondent was able to be notified by the Center of this Complaint, using the same means as was available to the Complainant, and filed a Response using contact details that were similar to those available to the Complainant. In short, the Respondent does not appear to have taken deliberate steps to conceal its identity and no bad faith is found on that basis.

The Complainant then makes the unsupported assertion that “all the evidences provided by the Complainant demonstrate that Respondent acquired the disputed domain name for the only purpose of disrupting the business of a competitor and has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s registered trademark”.

The Complainant offers no evidence or facts in support of the above assertions. Ultimately, any finding on both claims made above will depend on sufficient evidence being presented to persuade the Panel to find that the Respondent has registered and used the Domain Name with the knowledge of the Complainant and to take advantage of any such confusion that arises between the Domain Name and the DIGI PRINT SUPPLIES Mark. No such evidence has been provided.

This is not a case where it is obvious that the Respondent knew or should have known of the Complainant. The Complainant is based in Europe and its website merely advertises (without evidentiary support) that it has 15,000 customers worldwide. The Respondent is based in the United States and trades in the Americas. The Complaint has no evidence of the fame or reputation of the DIGI PRINT SUPPLIES Mark in the United States or elsewhere including evidence of sales under the DIGI PRINT SUPPLIES Mark or advertising. There is no evidence of the Complainant or its predecessors having any significant reputation prior to the Respondent’s registration of the Domain Name.

There are of course many cases where an organisation has an international reputation of sufficient standing such that a registration of a domain name which is the same as or similar to a trade mark of the organisation in question will readily be found to be in bad faith, even across a range of jurisdictions. Alternatively, there may be cases where, due to the specific circumstances of the registration and/or the registrant, it is possible to infer that the registration of a particular domain name was in bad faith, such as when the registrant is clearly aware of the trade mark owner and deliberately registers a domain name with the trade mark owner in mind. To the Panel, this is not however such a case – there is no evidence before the Panel to suggest that the Complainant’s reputation would have been known by the Respondent.

Even if the Respondent had been aware of the DIGI PRINT SUPPLIES Mark in the United States, he would have noted that the Complainant’s trade mark registration contained the disclaimer “No claim is made to the exclusive right to use “DIGI PRINT SUPPLIES” apart from the mark as shown” presumably allowing people in the United States to use the terms “Digi Print Supplies” and “Digi Print” in the United States as long as the graphical element in the DIGI PRINT SUPPLIES Mark was not reproduced. There is in the Panel’s opinion no reason why the Respondent would concluded that Domain Name was not available for registration on a “first come first served” basis.

Furthermore, this is not a case where there is no logical explanation for why the Respondent registered the Domain Name. The Respondent has provided a plausible good faith reason for registering and using the Domain Name, namely that “digi print” is short for “digital printing”, an assertion supported by the fact that the Complainant also uses “digi print” as an apparent abbreviation for digital printing. The Respondent’s submission is supported by the content of the Respondent’s Website which appears to be a legitimate business selling digital printing products. The Respondent’s Website makes no reference to the Complainant and does not appear to copy the style or get-up of the Complainant’s Website.

The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus. The Complainant has provided no evidence that the Respondent knew or should have known of the Complainant at the time of Registration or that the purpose of the registration and use of the Domain Name was to disrupt the business of the Complainant and not, as suggested by the Respondent, to register a domain name that described the nature of its business, selling digital printer supplies in the United States. The Respondent has provided a plausible reason for registering the Domain Name supported by the content of its website.

The Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). The Panel has noted its concern that the Complainant has failed to put on sufficient evidence showing whether the registration of the Domain Name was in bad faith instead relying on unsupported assertions and suggestions that the Respondent was using a fake address. In order to reach a conclusion that the Respondent had registered the Domain Name in bad faith, the Panel would have to make significant inferences about the conduct of the Respondent that are entirely unsupported by any evidence other than the fact that the Complainant and Respondent are similar companies that operate under somewhat similar domain names.

The Panel finds that the Complainant has not established that the Respondent registered and used the Domain Name in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Nicholas Smith
Sole Panelist
Date: June 27, 2014