WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hike Private Limited v. Perfect Privacy LLC / Zcapital
Case No. D2017-0902
1. The Parties
The Complainant is Hike Private Limited of New Delhi, India, represented by Saikrishna & Associates, India.
The Respondent is Perfect Privacy LLC of Jacksonville, Florida, United States of America (“United States” or “US”) / Zcapital of Los Angeles, California, United States, represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <hike.com> 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 May 4, 2017. On May 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 May 8, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 12, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2017. At the request of the Respondent, the due date for Response was extended to June 8, 2017. The Response was filed with the Center June 8, 2017.
The Center appointed Steven A. Maier, Christopher S. Gibson and Adam Taylor as panelists in this matter on July 18, 2017. The Panel finds that it was properly constituted. Each member of 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.
On July 18, 2017, each of the Complainant and the Respondent filed unsolicited supplemental filings in this proceeding. The Panel determined under paragraph 10 of the Rules that both the Parties’ supplemental filings should be considered.
On July 20, 2017, the Center received an unsolicited third-party communication relating to the disputed domain name. On the direction of the Panel, each of the Parties was given an opportunity to comment upon this filing and each of the Parties submitted its comments accordingly.
The Respondent submitted a further unsolicited supplemental filing on August 23, 2017, which the Panel did not deem it necessary to consider.
4. Factual Background
The Complainant was incorporated on October 13, 2011, and is a company registered in India. It provides an instant messaging platform for smartphones under the names “Hike” and “Hike Messenger”.
The Complainant is the owner of various trademark registrations which comprise or contain the names “Hike” or “Hike Messenger”, including for example:
- India trademark number 2229358 for HIKE, registered on November 4, 2011 in Class 41
- India trademark number 3148047 for a figurative mark HIKE MESSENGER, registered on December 31, 2015 in Class 24
- European Union Trade Mark number 11405156 for the word mark HIKE, registered on July 16, 2015, with a filing date of January 25, 2013, in classes 9, 18 and 31
According to the Registrar’s WhoIs database, the disputed domain name was first registered on May 23, 1996.
5. Parties’ Contentions
The Complainant submits that it is a leading Indian company with at least 100 million users on its platform sending over one billion messages per day. It states that it has engaged in multi-million dollar funding rounds and has undertaken significant promotional activities including an international coding competition. As a result of these and other matters, it submits that it has gained tremendous popularity, reputation and goodwill specifically related to its HIKE trademark.
The Complainant refers to its trademark registrations and states that it adopted figurative trademarks “[i]n order to add uniqueness and distinctiveness” to its HIKE messenger service. In addition to its existing registrations, the Complainant refers to a number of outstanding applications for United States trademarks and states that it acquired a United States company in January 2015 in order to expand its operations in that country.
The Complainant raises issues as to the identity of the Respondent in this matter and submits that there have been material transfers of the disputed domain name. The Complainant initially submitted that the Respondent had placed the disputed domain name in the hands of an entity named “contrib.com” for the purpose of monetizing the disputed domain name and that this created a partnership and/or “third-party ownership interests” in the disputed domain name, which should be deemed to constitute a change in registrant. The Complainant subsequently argued that by virtue of a settlement agreement dated March 1, 2017, which the Complainant exhibited, the Respondent Zcapital was obliged to transfer assets including the disputed domain name to one Alexander Tabibi. The Complainant also exhibited US legal proceedings brought by Alexander Tabibi to enforce the terms of that settlement agreement. The Complainant argued that the disputed domain name should therefore be deemed to have been transferred to Alexander Tabibi as a new registrant as of March 1, 2017. The Complainant also noted that the registered Administrative Contact and Technical Contact details for the disputed domain name were changed to reflect Alexander Tabibi’s email address.
The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark HIKE, comprising the Complainant’s trademark HIKE in its entirety with no addition other than the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has no relationship with the Respondent and has not authorized it to register the disputed domain name. It further contends that the Respondent is not commonly known by the disputed domain name and that it is not making legitimate noncommercial or fair use of the name. The Complainant also denies that the Respondent is using the disputed domain name in connection with any bona fide offering of goods or services and makes the following specific submissions:
1. that the Complainant cannot account for the Respondent’s use of the disputed domain name between 2012 and 2016 because the Respondent’s use of a “robots.txt” file has prevented the Complainant from obtaining archived web pages;
2. that from a date in or before mid-February 2017 until early April 2017, the Respondent used the disputed domain name to redirect to a website at “www.nimbuzz.com”, which is the website of a direct competitor of the Complainant in the Indian and global marketplace;
3. that for periods in April and May 2017, the disputed domain name resolved to a website at “www.hike.com” which referred to “contrib.com”, invited expressions of interest in the disputed domain name and linked to other web pages expressly soliciting offers for the name;
4. that on at least one occasion in April 2017, the disputed domain name was redirecting to a website at “www.trails.com”, which was providing details in relation to hiking trails, mountain biking trails, and walking trails; and
5. that on other occasions from April 2017 onwards, the disputed domain name did not connect to any website.
The Complainant submits that the Respondent’s use of the disputed domain name described above is “unlawful”. The Complainant produces evidence that “contrib.com” placed a theoretical value of USD 800,000 upon the disputed domain name and submits that the Respondent has sought improperly to monetize the disputed domain name and/or misleadingly to divert the Complainant’s customers.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant relies on the same factual matters as described above and in particular the use of the disputed domain name to redirect to the Complainant’s competitor’s website at “www.nimbuzz.com”.
The Complainant recognizes that, under the Policy, there is a conjunctive requirement to establish both that the disputed domain name has been registered and is being used in bad faith. While acknowledging that the relevant WhoIs records indicate the disputed domain name was originally registered in 1996, the Complainant makes two contentions as to why the conjunctive requirement has nevertheless been met:
1. The Complainant relies on the line of previous UDRP panel decisions known as the Octogen/Mummygold cases, in which certain panels found that, where there is evidence of current bad faith use by a respondent, then bad faith registration by that respondent may retrospectively be inferred.
2. As mentioned above, the Complainant contends that there have been de facto transfers of the disputed domain name by the Respondent to “contrib.com” and/or to Alexander Tabibi and that these transfers should be treated as new registrations of the disputed domain name. The Complainant contends in particular that, in the event of a transfer to Alexander Tabibi on March 1, 2017, then both registration and use of the disputed domain name in bad faith are apparent from the use of the name to resolve to the competing “www.nimbuzz.com” website between February and April 2017.
The Complainant relies additionally on the Respondent’s failure to respond to a legal notice from its legal counsel dated March 24, 2017 and a reminder email, and on its continuing to make commercial use of the disputed domain name after the present dispute was brought to its attention.
The Complainant requests the transfer of the disputed domain name.
The Respondent submits that the disputed domain name comprises a dictionary word which has been used only as generic name since its acquisition by the Respondent or the Respondent’s principal.
The Respondent concedes that the test of confusing similarity does not depend upon the date of the Complainant’s trademark, but submits that the Complainant’s US trademark applications, as opposed to its existing registrations, have no legal significance under the Policy.
The Respondent submits that the disputed domain name was registered by a Carlo Tabibi on March 11, 2011. The Respondent states that Carlo Tabibi is a principal of, and agent for, the Respondent Zcapital and that both he and the Respondent are the owners of numerous valuable generic domain names including, for example, <garden.com>, <candle.com>, and <farm.com>. The Respondent states that the disputed domain name was transferred by Carlo Tabibi to Zcapital, i.e., the Respondent, for reasons of administrative convenience on March 28, 2012. In relation to the events of 2017, the Respondent states that Alexander Tabibi became the sole shareholder of Zcapital in June 2017, and that while the company is now under his control, the identity of the registrant of the disputed domain name has not changed.
The Respondent denies that it has intentionally blocked access to archived web pages by use of a “robots.txt” file. The Respondent exhibits copies of web pages at the disputed domain name on various dates, including screenshots dated August 21, 2012 and April 1, 2016, which are headed “Hike.com The Best Place to Find Hike” and contain links to “Hiking”, “Camping”, “Camping Equipment”, “Hiking Vacation”, “Hiking Boot” and other similar links.
The Respondent states that it is certainly open to “development proposals” concerning the disputed domain name and acknowledges that the disputed domain name is an “outstandingly valuable” domain name in connection with its generic meaning. The Respondent contends that there is nothing sinister about inviting commercial proposals in connection with a valuable, generic, four-letter domain name and that the Complainant is obviously not the only party entitled to use that name.
The Respondent concedes that it was “not entirely diligent in maintaining proper configuration of the [disputed] domain name,” so that it may on occasions have resolved to an error page “or to wherever it may have been directed by Respondent’s advertising platform provider”. However, the Respondent denies having acted in bad faith for the purposes of the Policy in this regard or otherwise.
In particular, the Respondent refers to the conjunctive requirement for the Complainant to show that the disputed domain name was both registered and has been used in bad faith. The Respondent submits that the Octogen/Mummygold line of cases has been overwhelmingly rejected by panels under the UDRP and that the Complainant is unable to demonstrate registration in bad faith. The Respondent maintains that it first registered the disputed domain name in March 2011 (through Carlo Tabibi) at which time neither the Complainant’s trademark nor any of its registrations existed. The Respondent contends, in particular, that the Complainant does not appear to have used its mark HIKE in commerce prior to 2014 and that the Respondent was not therefore aware of that mark, and could not have had it mind, when it registered the disputed domain name.
The Respondent states that it removed the disputed domain name from its relevant advertising platform provider upon becoming aware of the Complainant’s objection. It denies that its continuing to use the disputed domain name after becoming aware of the present dispute constitutes use of the disputed domain name in bad faith as the Complainant submits.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations in India and the European Union which comprise the mark HIKE. The disputed domain name <hike.com> is identical to that trademark but for the gTLD “.com”, which is to be disregarded for the purposes of comparison. The Panel therefore finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the light of its findings in respect of the element of bad faith, below, the Panel does not consider it necessary to determine the question of whether or not the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As a preliminary matter, the Panel determines that, with respect to registration in bad faith, it makes no difference whether March 11, 2011 or March 28, 2012 should be deemed to be the date of registration of the disputed domain name for the purposes of the present proceeding. The earlier date was the date that the disputed domain name was registered in the name of Carlo Tabibi. Thereafter, the only registrant change was into the name of Zcapital, the Tabibi family’s company, on March 28, 2012. The Panel rejects the Complainant’s contentions that either “contrib.com” or Alexander Tabibi should be treated as a subsequent registrant of the disputed domain name, as neither has ever appeared on the record as a registrant.
The Complainant claims that the Respondent has been less than candid concerning certain dealings between members of the Tabibi family and the family’s company Zcapital allegedly affecting the disputed domain name in 2017. The Complainant has claimed that, under the terms of the settlement agreement dated March 1, 2017, it was agreed that the disputed domain name be transferred from Zcapital to Alexander Tabibi personally as a separate asset from Zcapital, and thus a new registration arose. The Respondent, on the other hand, claims that “[p]ursuant to a recent agreement among members of the Tabibi family, in June, 2017, [Alexander] Tabibi acquired the interests of Carlo and Antoinette [Tabibi], and thus became the sole shareholder and executive officer of the Respondent ZCapital Inc. while this Proceeding has been pending.” Whether the intent of that settlement agreement to resolve the family dispute was to transfer ownership of Zcapital to Alexander Tabibi or to transfer only the disputed domain name (and certain other assets) to Alexander Tabibi, the Panel makes no finding. However, the Panel does conclude that there is no evidence that the latter transfer has in fact taken place. In the circumstances, the Panel finds that the Respondent Zcapital (rightly or wrongly) remains the registrant of the disputed domain name and it is not for the Panel to deem any transfer to have occurred. Additionally, there is simply insufficient evidence that even in March 2017, had Alexander Tabibi newly acquired the disputed domain name, he was targeting the Complainant. In other words, in the Panel’s view, even had there been a material change in ownership which would trigger a fresh registration date for the purposes of the UDRP, the Complainant has not shown that the Respondent targeted its mark. There is no reason to think that any transfers between members of the Tabibi family and Zcapital – whether stemming from a dispute among the family members or otherwise – introduce any new evidence to demonstrate an intentional targeting of the Complainant or its HIKE trademark.
The Panel rejects the Complainant’s submission concerning the Octogen/Mummygold line of cases and accepts the Respondent’s submission that that line of reasoning has now been fundamentally disavowed (see, e.g., section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the circumstances, the Complainant must establish both that the disputed domain name was registered and has been used in bad faith.
The Panel finds that, between at least February and April 2017, i.e., some six years after its acquisition, the Respondent used the disputed domain name to redirect to a website at “www.nimbuzz.com” which was the website of a direct competitor of the Complainant. In the view of the Panel, such use of the disputed domain name constituted use in bad faith for the purposes of the Policy. It is no excuse for the Respondent to say that the domain name was “misconfigured” or under the control of its third-party advertising platform provider at that time.
However, the Policy requires both registration and use of the domain name in bad faith. In the view of the Panel, there is no evidence to show, or reason to infer, that the disputed domain name was registered by the Respondent (or any of the individual Tabibi family members) in bad faith and the evidence points instead to the contrary conclusion. The disputed domain name comprises the dictionary term “hike” and, in the view of the Panel, the Complainant has failed to show that the Respondent registered the disputed domain name with the Complainant’s trademark in mind and for the purpose of targeting the Complainant’s goodwill. For the reasons set out below, the Panel finds that, irrespective of whether the relevant date of registration of the disputed domain name was in March 2011 or March 2012, there is no evidence that, at either time, the Complainant targeted the Respondent or its HIKE trademark.
The Complainant did not exist in March 2011. And there is little evidence of the Complainant’s commercial reputation in the mark HIKE as of March 2012; certainly insufficient to conclude that the Respondent was or ought to have been aware of the Complainant’s trademark at that date. On the contrary, the evidence shows (a) that, at various times in 2012 and 2016, the disputed domain name was used for sponsored links relating to the generic meaning of the term “hike”; and (b) that the Respondent was in the business of registering single-word generic domain names, including not only those referred to in the Response, but also a very substantial number of other generic names such as <dog.com>, <garages.co> and <skating.net> that are included in a schedule to the settlement agreement exhibited by the Complainant. In all the circumstances, the Respondent’s registration of the disputed domain name is overwhelmingly more consistent with its registration of a portfolio of generic domain names than with any intention to target or take unfair advantage of the Complainant’s trademark.
The Complainant has therefore failed to establish that the disputed domain name was registered in bad faith and the Complaint must fail on that ground.
For the foregoing reasons the Complaint is denied.
Steven A. Maier
Christopher S. Gibson
Date: August 25, 2017