WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
mPedigree Network, Ltd. v. Domain Privacy Service / Ashifi Gogo
Case No. D2017-1589
1. The Parties
The Complainant is mPedigree Network, Ltd. of Accra, Ghana, represented by Sidley Austin LLP, United States of America ("United States").
The Respondents are Domain Privacy Service of Provo, Utah, United States / Ashifi Gogo of Hanover, New Hampshire, United States.
2. The Domain Name and Registrar
The disputed domain name <mpedigree.com> (the "Disputed 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 August 15, 2017. On August 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2017, 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 14, 2017. 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 company that was incorporated in 2009 in Ghana and is headquartered in Accra, Ghana. It is the successor to a business that was founded by an individual called Bright Simons in 2007 in Ghana to combat the problem of counterfeit products, especially in the pharmaceutical and cosmetics industries. The Complainant provides a system which allows a purchaser to confirm that goods are authentic and not counterfeit. Typically, a product bears what the Complainant calls its "Goldkeys" scratchoff covering a hidden code. The purchaser then texts the hidden code to a provided number, allowing them to instantly verify that the product is authentic. The filed evidence establishes that the Complainant's system has been very successful in helping suppliers tackle the problem of counterfeit products, particularly in various African countries where that problem is endemic. The Complainant's system has been widely recognised and praised and won numerous awards. For example in 2016, Fortune Magazine recognized mPedigree as one of its 50 world-changing companies.
The background to this Complaint is a dispute between Mr. Simons, who was the founder and one of two original members of the Complainant's Executive Council and a Mr. Gogo who was the other original member of the Executive Council. Substantial detail about this dispute has been provided. To the extent that it raises matters of relevance to this dispute it is described and discussed further below.
The Disputed Domain Name was registered by Mr. Simons in 2007. According to the Complainant, the registration of the Disputed Domain Name was changed on August 11, 2010, by Mr. Gogo. The new registrant was Mr. Gogo (via a privacy service). The Disputed Domain Name currently resolves to a "parking page" provided by a hosting provider.
6. Parties' Contentions
A. Complainant
The Complainant's contentions can be summarized as follows.
The Disputed Domain Name is identical or confusingly similar to the Complainant's MPEDIGREE trademark. The Complainant says that it has common law rights in the MPEDIGREE trademark by virtue of its successful and widely praised system.
The Respondent has no rights or legitimate interests in the term "mpedigree". It says that term is a coined word which has no other meaning other than in relation to itself and its system.
The Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says that it was registered to disrupt its business. The following is what the Complainant says occurred. Mr. Simons originally registered the Disputed Domain Name on August 25, 2007. While Mr. Simons and Mr. Gogo worked together during the early days of mPedigree, Mr. Gogo secretly formed a competitor to mPedigree, initially calling it mPedigree Logistics, before ultimately renaming and incorporating it under the name Sproxil. Mr. Simons was not initially aware that Mr. Gogo was forming a competitor, and it was during this time that Mr. Gogo assumed control of the yearly registration process of the Disputed Domain Name. Specifically the registration of the Disputed Domain Name was changed on June 26, 2012, by Mr. Gogo acting on his own behalf (or on behalf of Sproxil), but not on behalf of the Complainant and without the Complainant's knowledge. The new registrant was called Domains by Proxy. The Complainant says this is to be treated as a new registration and was made in bad faith. The Complainant says the Disputed Domain Name has been registered and used primarily to disrupt its business and/or to intentionally attract for commercial gain, Internet users to a competitor's website by creating a likelihood of confusion. The registrant of the Disputed Domain Name has subsequently been changed again to the present Respondent.
When the Complainant lost control of the Disputed Domain Name it was forced to register and adopt a different domain name, <goldkeys.org>, for its business.
B. Respondent
No Response has been filed.
7. Discussion and Findings
Preliminary issues
As a preliminary issue the Panel notes this is a case where the Respondent appears to be a privacy service provider. This is not however a case where the Registrar has disclosed details of any other underlying registrant, so the Complainant has not been able to file an amended Complaint directed at the substantive registrant. The Complainant says that the substantive registrant is Mr. Gogo (or his company Sproxil) and that the previous website at the Disputed Domain Name provided links to Sproxil's services. Given that the Respondent has been properly given notice of these proceedings (see below) and no Response has been filed, the Panel accepts the Complainant's submissions in this regard and infers that the substantive registrant of the Disputed Domain Name is Mr. Gogo or his company. References in this decision to "the Respondent" should be taken to include Mr. Gogo and/or his company where the context permits.
The Panel notes that no communication has been received by the Center from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar (and were physically delivered and signed for at the Respondent's notified postal address) then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any response. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Substantive issues
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with 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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the evidence field by the Complainant establishes that it has common law rights in the term MPEDIGREE. In this regard the Panel has applied the approach described in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.3 as follows:
"What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant's goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning".
The Panel considers the term "mpedigree" to be distinctive. Although the term contains the English word "pedigree" within it, the addition of the letter "m" creates a coined term which the Panel considers either is, or is capable of becoming, distinctive. The filed evidence is extensive and establishes that the above requirements as set out in WIPO Overview 3.0 are met. Accordingly the Panel proceeds on the basis that MPEDIGREE is a trademark in which the Complainant has rights.
The Panel considers the Disputed Domain Name to be identical to the Complainant's MPEDIGREE trademark. It is well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not generally affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds that "mpedigree" is a term with no other commercial meaning save in relation to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; 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 or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MPEDIGREE trademark. The Complainant has prior rights in the MPEDIGREE trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights nor any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant recognises that the relevant requirement in this regard is conjunctive and that it has to show that the Disputed Domain Name was both registered and used in bad faith (emphasis added). It also recognises that the original registration of the Disputed Domain Name in 2007 by Mr. Simons cannot be said to have been in bad faith as it was registered for and on behalf of the Complainant (or its predecessor business). It says that the relevant date of registration in this regard is to be taken as June 26, 2012, when Mr. Gogo acting on his own behalf (or on behalf of Sproxil), but not on behalf of the Complainant, caused the registrant to be changed from "Bluehost.com" (the Complainant's hosting provider) to Domains by Proxy and subsequently to Domain Privacy Service. In the present circumstances the Panel accepts as correct the Complainant's account of what happened given that the Respondent has been provided with an opportunity to rebut or dispute that account but has chosen to stay silent and filed no response.
The Panel agrees with the Complainant that the present case is similar to that considered in Revevol SARL v. Whoisguard Inc. / Australian Online Solutions, Domain Support, WIPO Case No. D2015-0379. In that case the panel stated as follows:
"According to WhoIs data produced by the Complainant, the record updated on September 30, 2007 showed the registrant of the disputed domain name to be Revevol Ltd. of Dublin, Ireland, and the administrative and technical contacts to be the domain administrator at the same address. The registration service provider was shown to be Australian Online Solutions. On November 28, 2007, the Complainant found that its control of the disputed domain name was disabled. WhoIs data show the record to have been updated on December 11, 2007, with the registrant changed from Revevol Ltd. to Australian Online Solutions, and the administrative contact and technical contacts changed to SJ. The Complainant has stated that this change was made without its knowledge or authority and without notification.
It is evident that the guiding mind behind the Respondent had detailed knowledge of the Complainant, having been a founder, director and shareholder. Inescapably, the Respondent would have been aware of the Complainant's rights in its trademark and in the disputed domain name and that to deprive the Complainant of control of the disputed domain name without authority or notification would have the effect of infringing those rights. The Panel finds the Respondent's contravention of paragraph 2(b) of the Policy in this case to constitute grounds for a finding of bad faith registration of the disputed domain name under the wider provisions of paragraph 4(b) of the Policy".
The Panel agrees with that approach and finds it applicable to the present case. So far as the subsequent use of the Disputed Domain Name is concerned there is no evidence in this case1 of it having been used other than by linking it to a service provider generated holding page. It seems likely, given the factual background that this change of registration was effected by Mr. Gogo to prevent the Complainant being able to use the Disputed Domain name itself, and as such amounts to conduct within Policy, paragraph 4(b)(ii) of the Policy as being "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name". Paragraph 4(b)(ii) requires a pattern of such behaviour but in the Panel's view the related case mPedigree Network, Ltd. v. Registration Private, Domains By Proxy, LLC / Ashifi Gogo, Undergrad Thesis, WIPO Case No. D2017-1495 concerning <mpedigree.org> establishes such a pattern. In any event it also amounts to conduct which was within paragraph 4(b)(iii) as having "registered the domain name primarily for the purpose of disrupting the business of a competitor".
Further the Panel notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. Decision
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, <mpedigree.com>, be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: September 28, 2017
1 Evidence the Complainant has referred to in this regard appears to the Panel to relate only to <mpedigree.org> and the Panel has accordingly not considered this as relevant.