WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shesafe Pty Ltd v. DomainMarket.com
Case No. D2017-1330
1. The Parties
The Complainant is Shesafe Pty Ltd of Malvern East, Victoria, Australia, represented by K&L Gates LLP, Australia.
The Respondent is DomainMarket.com of Potomac, Maryland, United States of America (“USA”), represented by Smith, Gambrell & Russell, LLP, USA.
2. The Domain Name and Registrar
The disputed domain name <shesafe.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017, naming the Respondent as Michael F Mann, Domain Asset Holdings, LLC. The Center transmitted its request for registrar verification to the Registrar on the same date. The Registrar replied on July 12, 2017, confirming that the Domain Name had been placed under a locked status to prevent any transfers or changes to the registration information during the proceedings and that the registration agreement was in English. However, the Registrar identified the registrant as “DOMAIN ADMINISTRATOR, DOMAINMARKET.COM”.
The Center drew the last point to the attention of the Complainant on July 13, 2017, and asked it to amend the Complaint to reflect the correct name of the Respondent. The Complainant submitted an amended Complaint on July 14, 2017, identifying the Respondent as Domainmarket.com, but also contending that the registrant of the Domain Name was identified as Michael F Mann of Domain Asset Holdings on the Registrar’s WhoIs database when the Complaint was filed and that they and Domainmarket.com are the same entity or related entities.1
The Center verified that 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was August 3, 2017. The Response was filed with the Center on August 3, 2017.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 8, 2017. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has carried on a business of providing ride sharing services in vehicles driven by women for women and children in Australia since September 2016. The Complainant is registered as the proprietor of the trademark SHESAFE in Australia pursuant to an application filed on November 17, 2016 and granted on June 21, 2017 (trademark No. 1809921). The Complainant also applied on May 23, 2017 to register the trademark SHESAFE in China, the European Union, New Zealand and the USA, claiming priority from its Australian application.
The Domain Name was originally registered on July 24, 2014, and acquired by the Respondent on August 28, 2016. It resolves to a website on which the Domain Name is offered for sale at USD 9,888.
5. Parties’ Contentions
The Complainant contends that it has registered rights and an extensive reputation under the mark SHESAFE in Australia and that the Domain Name is confusingly similar to this mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that it has not found any evidence that the Respondent has trademark rights in SHESAFE anywhere in the world or that the Respondent has made any legitimate use of this mark. It confirms that it has not licensed or permitted the Respondent to use this mark or the Domain Name, and that the Respondent is not sponsored or endorsed by or affiliated with it. It adds that it has not been able to identify any preparations by the Respondent for bona fide use of the Domain Name or any instance of the Respondent being known by the Domain Name or any legitimate noncommercial or fair use of the Domain Name by the Respondent.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. It asserts that “shesafe” is an invented word with no meaning in any language. It contends that the notoriety of its mark in the field of ridesharing services raises a presumption that the Respondent registered the Domain Name for the purpose of selling it to the Complainant or one of its competitors. The Complainant further points out that the Domain Name resolves to an inactive website on which it is offered for sale at USD 9,888 and submits that this offer for sale is proof of use in bad faith. Finally, the Complainant draws attention to a number of cases in which the Respondent has been found to have registered and used domain names in bad faith. The Complainant therefore submits that the Respondent registered the Domain Name to disrupt its business, to attract consumers to the Respondent’s website by creating a likelihood of confusion, and to obtain the benefit of the Complainant’s reputation in the mark SHESAFE and to attract traffic to the Respondent’s website.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent submits that the first requirement of the UDRP is only met if the Complainant’s rights predate the registration of the Domain Name. It then affirms, with the support of a signed declaration of Michael Mann, that it acquired the Domain Name on August 28, 2016, prior to any registered or common law rights shown by the Complainant. The Respondent also points out that the Complainant’s pending trademark applications in other countries do not in themselves constitute rights for the purpose of the first requirement of the UDRP and that the Complainant has provided no evidence at all of its alleged activities under the SHESAFE mark.
The Respondent claims that it has rights or legitimate interests in the Domain Name because it is in the business of buying and selling domain names comprising descriptive and generic terms. According to the Respondent, this is a use of its stock of domain names in connection with a bona fide offering of goods or services.
The Respondent denies that it has registered or used the Domain Name in bad faith. It points out that it could not have been aware of the Complainant’s alleged rights in the mark SHESAFE when it acquired the Domain Name. It points out that none of the examples in paragraph 4(b) of the UDRP applies. It denies that the Complainant’s mark is well known or was well known when it acquired the Domain Name so as to create a presumption of bad faith. In any case, it submits that actual knowledge of the Complainant’s rights at the time of its acquisition of the Domain Name would be required for the registration to be in bad faith, and it repeats that it had no such knowledge.
In response to the Complainant’s reference to various findings of bad faith against the Respondent in decisions under the UDRP, it refers to various other decisions in which such allegations against it have been rejected.
Finally, the Respondent points out that the Domain Name comprises two common words in the English language, lending it a descriptive element and providing a logical basis for its acquisition.
The Respondent does not make, and the Panel does not infer, any request for a finding of reverse domain name hijacking. In the absence of any such request, the Panel does not consider it appropriate to consider this potential issue.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name was registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the mark SHESAFE. The Panel also finds that the Domain Name is effectively identical to this mark, from which it differs only in the addition of the generic Top-Level Domain suffix, which is normally to be discounted when considering the first requirement of the UDRP.
The general consensus of UDRP panels is that the complainant’s trademark rights need not predate the respondent’s registration or acquisition of the Domain Name for the first requirement of the UDRP to be satisfied. This Panel adheres to this consensus. The fact that the Complainant’s rights do not predate the Respondent’s registration or acquisition of the Domain Name is relevant to the second and third requirements but does not affect the first requirement.
The Panel finds that the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
In this Panel’s view, the mere acquisition of a domain name with a view to selling it, even if bona fide, does not as such confer a right or legitimate interest in the domain name within the meaning of paragraph 4(a)(ii) of the UDRP. However, it is not necessary to consider this point further in view of the Panel’s conclusion on the third requirement.
C. Registered and Used in Bad Faith
It is well established that the acquisition of a domain name constitutes a registration for the purpose of the third requirement of the UDRP, so that a respondent’s acquisition of a domain name in bad faith satisfies the first limb of this requirement even if the domain name was originally registered by another party in good faith.
However, on the evidence in this case, the Respondent’s acquisition of the Domain Name predated the commencement of the Complainant’s business, even if the latter’s unsubstantiated assertion is accepted. Therefore the Respondent’s acquisition of the Domain Name could not have been primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor of the Complainant, or otherwise targeted at the Complainant, or even made with a reckless disregard of the Complainant’s rights.
In these circumstances, the Panel cannot discern any basis for finding that the Domain Name was registered in bad faith. The Panel finds, on the contrary, that the Domain Name was acquired bona fide by the Respondent as a domain name that might be of value on account of its descriptive elements.
Although the examples in paragraph 4(b) of the UDRP are not exhaustive, the fact that paragraph 4(b)(i) refers to registration or acquisition primarily for the purpose of sale etc. to the complainant or a competitor of the complainant indicates that acquisition for the purpose of sale to another party should not necessarily be presumed to be in bad faith.
The Panel’s finding that the Domain Name was not registered in bad faith is sufficient to reject the Complaint, since the third substantive element of the UDRP requires both registration and use in bad faith. However, it is also the Panel’s view that the Respondent’s general offer of the Domain Name for sale does not constitute use in bad faith in circumstances where it was acquired by the Respondent in good faith and could still be acquired and used by various other parties without violating the Complainant’s rights.
The third requirement of the UDRP is not satisfied in this case and the Complaint must be rejected.
For the foregoing reasons, the Complaint is denied.
Date: August 22, 2017
1 The Panel notes that the Response contains (as an annex) a declaration by Michael Mann, who indicates that he is the owner of “DomainMarket.com”.