WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Air Serbia a.d. Beograd Jurija v. Domains By Proxy, LLC / Meijun Lu
Case No. D2017-1986
1. The Parties
The Complainant is Air Serbia a.d. Beograd Jurija of Belgrade, Serbia, represented by ZMP (Zivko Mijatovic & Partners), Serbia.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Meijun Lu, of Singapore, Singapore.
2. The Domain Name and Registrar
The disputed domain name <jat.com> 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 October 11, 2017. On October 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2017, 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 October 16, 2017 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 October 20, 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 October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. The Respondent submitted a communication to the Center on October 28, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to appoint the Panel on November 20, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 4, 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 the Serbian national air carrier, having its origins over 90 years ago. Originally named “Aeroput”, it began using the name “Jugoslovenski aero-transport” and the associated abbreviation “JAT” on April 1, 1947. The Complainant notes that over the years it has used JAT extensively as an unregistered trademark on aircraft livery, tickets, postcards, posters, catering services, buses and coaches, and travel publications. The Complainant notes that it launched its “first web page” in 1997 using the disputed domain name. No other information is provided by the Complainant as to how or when it relinquished the use of the disputed domain name, despite the fact that this must have happened in order for the Respondent to have been able to acquire it. Nor does the Complainant explain to what extent it used the disputed domain name for email purposes in addition to its asserted use as a corporate website.
The Complainant notes that although it has undergone a range of corporate restructures since 1991, and since October 29, 2013 has been named “Air Serbia”, it has retained the use of the mark JAT at all times such that this continues to feature on its aircraft livery and website. It appears from the Complainant’s printout of that website that the Complainant has transitioned from the disputed domain name to the domain name <airserbia.com> for its corporate website.
The disputed domain name was created on March 18, 1997. Given that the year of creation corresponds to the year in which the Complainant says that it launched its website at the disputed domain name, it is reasonable to assume that the Complainant was the original registrant of the disputed domain name.
Little is known about the Respondent other than that it has an address in Singapore. It is also not known when the Respondent acquired the disputed domain name after its original registration by the Complainant. The website at the disputed domain name displays a hosting provider’s “coming soon” page.
The Complainant performed a test on September 1, 2017 whereby the Complainant says that an individual in its legal team was able to send an email to an alternative member of its staff by substituting the disputed domain name <jat.com> in place of its own <airserbia.com> domain name. The test is best described as follows (the actual email addresses are anonymized by the Panel although the email address structure is retained). A member of the Complainant’s staff with the email address “firstname.lastname@example.org” sent an email intended for another member of its staff but intentionally using the email address “email@example.com”. The Complainant states that this email was directly and immediately forwarded to the email address “firstname.lastname@example.org”. The Complainant makes the assumption that this was done by a person or a system which controls email received to the disputed domain name. However, the evidence provided by the Complainant merely shows receipt of an identical email to the name “person 2” and does not show the full email address or domain name via which such email message was received or the path which the email took over the Internet, if any.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant 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 describes the intensive use to which it has placed JAT as an unregistered word mark in connection with air transport services together with corresponding evidence of images of tickets, aircraft, posters, buses and coaches, and travel media. The Complainant adds that it used the JAT trademark in respect of its flights to Australia from 1970 which featured stopovers in Singapore, where the Respondent is based. The Complainant also provides evidence of its change of name to Air Serbia which it notes had full legal continuum in the sense that it has maintained its original registration number within the Serbian Business Registry. The Complainant asserts that as air transport services are heavily regulated, there are a limited number of air carriers on the market and consequently that consumers of air transport services easily remember the relevant trademarks in the industry. The Complainant notes that the numbers of passengers which it carries are in the millions with a peak year of 1987 when the Complainant carried over 4.5 million passengers across the globe. The Complainant concludes that the disputed domain name completely incorporates the sole distinctive word element of the Complainant’s JAT trademark.
The Complainant asserts that before any notice to the Respondent of the disputed domain name there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of gods or services. The Complainant submits that the Respondent has not been commonly known by the disputed domain name even if it has acquired no trademark rights. The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark. The Complainant submits that “benevolent use” of its trademark cannot be determined as the disputed domain name has not been configured to display a website.
The Complainant notes that “both at the moment of creation and acquisition” of the disputed domain name the Complainant already held a well-known trademark and that there is no evidence or publicly available data showing that the Respondent has any prior right. The Complainant asserts that it gave no authorization to the Respondent to acquire the disputed domain name. The Complainant submits that the “passive holding” doctrine can be applied to this case pursuant to section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) because there is a high degree of distinctiveness and reputation of the Complainant’s trademark, the Respondent cannot provide evidence of actual or contemplated good faith use, the Respondent has concealed its identity behind a privacy service and there is no plausible good faith use to which the disputed domain name may be put.
The Complainant adds that while all criteria for passive holding are fulfilled, the Respondent’s bad faith is demonstrated in the linking of email sent to the disputed domain name to the email servers of <airserbia.com>. The Complainant describes its test email as noted in the factual background section above and asserts that the circumstances indicate that the Respondent has an awareness of the Complainant and that it wanted to establish a close connection to the Complainant in order to provoke it to offer to purchase, rent or otherwise obtain the disputed domain name. The Complainant adds that this also confirms the well-known nature of its trademark.
The Respondent did not reply to the Complainant’s contentions.
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. Preliminary Matter: Language of the Administrative Proceeding
On October 29, 2017, the Respondent emailed the Center requesting that the language of the administrative proceeding be Chinese. The Respondent explained that it does not understand English and had been using the Singapore Chinese version of the Registrar’s website. The Respondent supplied the hyperlink to the relevant web page. The Respondent added that it had agreed to the Chinese version of the registration agreement and again provided the relative hyperlink. The Respondent asserted that in terms of paragraph 11 of the Rules, the language of the proceeding should be Chinese because this corresponds with the language of the registration agreement. The Respondent noted that it was communicating in English with the help of a friend who had translated its email.
On October 30, 2017, the Center acknowledged receipt of the Respondent’s communication and explained that the Registrar had advised that the language of the registration agreement was English such that pursuant to paragraph 11 of the Rules the language of the administrative proceeding would be English. The Center reminded the Respondent of the Response due date and advised that if no Response was received by that date it would forward the Respondent’s email to the Panel for consideration.
Paragraph 11(a) of the Rules states that unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Section 4.5.1 of the WIPO Overview 3.0 notes that panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement, such as (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
Section 4.5.2 of the WIPO Overview 3.0 goes on to discuss party requests regarding the language of proceedings, noting that on panel appointment, both parties’ arguments are provided to the panel for its determination as to the language of proceeding, which may include accepting the complaint as filed, and a response in the language of the registration agreement, thereby seeking to give both parties a fair opportunity to present their case.
It is unusual in the Panel’s experience to be presented with an apparent dispute between a respondent and the concerned domain name registrar as to the language of the registration agreement. The Panel notes that in the present case the Registrar has stated that the applicable language is English and that the Respondent denies this. Despite the Respondent’s contention, the Panel notes that the Registrar’s English language agreement specifically anticipates and addresses any potential conflict of languages in paragraph 20, “English language controls” which states that the registration agreement is executed in the English language and that while the Registrar may provide translations, these are for convenience purposes only. The Panel also visited the site which the Respondent said contained the Registrar’s Chinese language terms. On entering the site, a dialog box appears above the agreement. A machine translation from Chinese into English of the words in this box indicates that these are in substantially the same terms as paragraph 20 of the Registrar’s English language agreement and that the dialog box expressly requires visitors to agree that the English language version will govern their relationship with the Registrar.
The question before the Panel is whether to apply the typical default provision in paragraph 11 of the Rules in respect of the language of the proceeding or whether fundamental rules of due process may require an alternative approach. The Panel considers that this is a decision which must be taken based on the nature of the parties’ request(s) and the individual facts and circumstances of a given case. In some cases, the requirement to proceed with due expedition will outweigh the due process consideration of ensuring that a party has its say in a language which it understands. In others, the requirement to ensure that parties are treated with equality and that each has a fair opportunity to present its case will outweigh considerations of the economics of translation, the administrative burden of selection and appointment of bilingual panelists and similar factors.
In this particular case, it could be regarded as entirely fair and appropriate to apply the default provision given that the Registrar has confirmed the language of its registration agreement and that both the Registrar’s English terms and its Chinese translation leave potential registrants in no doubt that English is the prevailing language. Nevertheless, had the Panel regarded it essential to the outcome of the case that it heard from the Respondent in answer to the contentions in the Complaint, it may have given further consideration to requesting the appointment of a bilingual English/Chinese panelist in its stead, in order that the Respondent could be invited to submit its Response in Chinese while the case could then proceed to be decided in English. However, in light of the fact that the Panel proposes to deny the Complaint in the absence of a Response, for the reasons set out below, the Respondent’s request regarding the language of the proceedings effectively becomes moot. In these circumstances, the Panel will proceed with the default provision in paragraph 11 of the Rules and finds that the language of the proceeding will be English.
B. Identical or Confusingly Similar
In order for the Complainant to make out its case under this element of the Policy, it must show that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark. The mark on which the Complainant relies for this purpose is JAT. The Complainant does not mention any trademark registrations in respect of this mark but rather seeks to establish that it has an unregistered or common law mark in that word. Section 1.3 of the WIPO Overview 3.0 indicates in order to establish such a mark the Complainant must show, with appropriate evidence, that this has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. The section adds that relevant evidence 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.
In the present case the Panel notes that the Complainant has produced ample evidence of its widespread use of the JAT mark over an extended period which has given rise to substantial sales and consequent media and consumer recognition including as a result of extensive advertising. In these circumstances the Panel finds that the Complainant has UDRP-relevant rights in the JAT mark. Turning to a comparison between this mark and the disputed domain name, the Panel notes that the mark is exactly reproduced without any modification in the disputed domain name, disregarding the generic Top-Level Domain (“gTLD”) “.com” for the purposes of comparison as is customary in cases under the Policy on the grounds that it is required for technical reasons only.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. 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 on line 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.”
The Complainant’s case on bad faith has two limbs. In the first place, it relies on the doctrine of “passive holding” as discussed in section 3.3 of the WIPO Overview 3.0 and in the second place it relies upon an email test which the Complainant says is capable of demonstrating the Respondent’s knowledge of and intent to target the Complainant’s rights.
Taking the question of passive holding first, the Panel agrees with the Complainant that the non-use of a domain name, including a “coming soon” page as is displayed in the case of the disputed domain name, would not prevent a finding of bad faith in and of itself. However, as section 3.3 of the WIPO Overview 3.0 observes, panels look at the totality of the circumstances of each case including, for example, (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
While the Complainant has demonstrated that its use of the mark JAT is sufficient to establish an unregistered mark, it has not satisfied the Panel on the balance of probabilities that such term or word is more likely than not to reference the Complainant in the minds of the public as opposed to its other possible meanings or uses. Nor has it satisfied that Panel that its JAT mark is sufficiently renowned that, on the balance of probabilities, the Respondent must have been targeting the Complainant and its rights in its selection of the disputed domain name. It should not be overlooked that the Complainant itself accepts that its trademark relates to a narrow highly regulated industry sector. The mark is composed of three characters in an order which allows it to be pronounced as a word, namely consonant, vowel, consonant. In the Panel’s view, there is every reason to believe that these three letters are capable of being put to multiple different uses, whether as a pronounceable acronym or as a mark relative to unrelated goods or services which would not necessarily reference or target the Complainant’s mark. What is more, the Panel notes that the word “Jat” has a dictionary meaning referring to an ethnic group of Indo-European people from North India and Pakistan.
Weighing this factor in the balance, the Panel considers that the Complainant’s trademark does not exhibit any notable distinctiveness outside the relatively narrow confines of it use as an identifier of air transport services. Greater emphasis has to be given to the fact that there are likely to be multiple alternative meanings or uses of that term which do not necessarily reference the Complainant’s trademark. It is of some significance that while the Complainant has been able to produce considerable evidence as to how it has used the JAT mark over the years, it has not provided any evidence showing or tending to show that the term “jat” is more likely than not to be seen by the public as referencing that trademark as distinct from other possible uses or meanings. In this context, it is possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s trademark at the time of registration, or, if aware, would have had no intent to target such mark through the registration and use of the disputed domain name.
Turning to the lack of a Response in the present case, it is indeed clear from the record that the Respondent has not submitted a Response despite having been specifically reminded of the filing deadline by the Center. Nevertheless, the nature of the Respondent’s communication with the Center indicates to the Panel that it was eager to provide a Response if the language issue could be resolved in its favor and equally likely that it was not in a position to file a Response if it was required to do so in English. The Panel is therefore not inclined to place much weight on that issue in this particular case.
While the Respondent did conceal its identity behind a privacy service, it has often been observed in cases under the Policy that this is not, in and of itself, indicative of bad faith though it may be one of several cumulative factors to be weighed in the balance. Previous panels have taken the lack of a response and the concealment of a complainant’s identity into consideration on the question of passive holding because either or both of these factors in some circumstances can lead to a reasonable inference that a respondent is intentionally “lying low” in an avoidance tactic, for example as part of a deliberate but somewhat indirect process of targeting a complainant. There is no evidence that this is the situation here, given that the Respondent has communicated with the Center and stands ready to provide a Response. Rather than avoiding contact with the Complainant or the Center, the Respondent prepared and delivered a reasonable submission regarding the language of the proceeding by email within two days of notification of the Complaint. In short, there is nothing before the Panel which indicates that the Respondent was actively trying to delay disclosure of its identity or was attempting to frustrate or avoid notification of the Complaint.
Concerning the implausibility of any good faith use, as outlined above, the Panel considers that it is entirely possible to contemplate a good faith use of a three character domain name, such as the disputed domain name, which does not in any way target the Complainant’s rights. It has long been recognized that such domain names may be capable of multiple uses (see for example the comments of the panel in Kis v. Anything.com Ltd., WIPO Case No. D2000-0770, “The Domain Name at issue here is a three-letter second-level domain within the popular “.com” top-level domain. All or nearly all of the three-letter names have long been taken […]. Respondent appears to have selected the Domain Name ‘kis.com’ because of its length (if not because it represents an acronym for the Korean Information Site), rather than because it corresponds to Complainant’s trademark[…].” Also see the more recent discussion in S.P.C.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, WIPO Case No. D2014-0327 and the additional cases cited therein).
There is an added dimension in the present case which results from a single line within the Complainant’s submissions regarding its claim to unregistered trademark rights in which it asserts that it launched its first web page at the disputed domain name in 1997. Based on this assertion, the Panel considers that it is more likely than not that the Complainant was the original registrant of the disputed domain name in 1997. As noted above, the Panel reasonably infers that the Complainant relinquished its rights to the disputed domain name at some point in the past such that the Respondent was able to acquire it. The likely acquisition date of the disputed domain name by the Respondent is very important to the Complainant’s case as it is not only the date on which the Respondent’s alleged registration in bad faith requires to be assessed but also is particularly relevant to the Complainant’s allegations regarding passive holding. For example, if the disputed domain name was only acquired very recently this might explain why there is a “coming soon” notice on the associated website. By contrast, if the disputed domain name has been held in the manner described by the Complainant for a much longer period since acquisition this might have added a measure of support to the Complainant’s case on passive holding. The Panel is concerned to note that although the facts relating to this matter are uniquely in the knowledge of the Complainant, it has chosen not to elaborate to any extent as to the full history of the disputed domain name.
There are many and varied questions which may arise from this particular revelation in the Complainant’s submissions. For example, did the Complainant abandon the registration recently or many years ago? Are there likely to be intervening registrants in the chain before the Respondent’s acquisition? Did the Complainant decide not to renew the disputed domain name upon its change of name to Air Serbia and its adoption of the domain name <airserbia.com>? Did the Respondent acquire the disputed domain name immediately after the Complainant relinquished it or at a later date? For what length of time has the Respondent held the disputed domain name since its acquisition and for how long has the Respondent’s “coming soon” page been displayed? Is the Respondent likely to have known of the fact that the Complainant was the previous registrant of the disputed domain name? The Panel does not know the answers to any of these questions. However, any one such answer could be of considerable significance to the factual matrix in this case. As a single example of the possible permutations, even if it could be shown that the Respondent had full knowledge of the Complainant and its airline activities prior to acquiring the disputed domain name, the fact that the Complainant had changed its corporate name in 2013 and may have decided not to renew the disputed domain name at that point might have led the Respondent to a reasonable belief that the Complainant no longer had any interest in the JAT mark.
Turning to the second limb of the Complainant’s case on bad faith, the Complainant submits that email to the disputed domain name is being automatically redirected to the Complainant’s <airserbia.com> domain name and that this indicates both knowledge and intent on the part of the Respondent to target the Complainant. Given the discussion on the Complainant’s previous use of the disputed domain name above, it is perfectly plausible as a further permutation that if the Complainant has recently relinquished the disputed domain name and, over the period of its registration had used it for corporate email services, a considerable volume of email may still be being received at the disputed domain name, albeit intended for the Complainant. The Respondent could choose to configure its mail server to reject such email or to forward it on to the Complainant’s current domain name. Should it have chosen to forward it on, as the Complainant contends, this does not in the Panel’s mind demonstrate any kind of bad faith intent. On the contrary, it strikes the Panel as a reasonable thing to do in order to address what might well be an otherwise overwhelming volume of misaddressed or out of date email being received at the disputed domain name. Nor does this necessarily demonstrate prior knowledge of the Complainant or its rights, or an intention to target these, on the part of the Respondent. It is equally plausible that the first time that the Respondent knew of the Complainant’s existence was after it had acquired the disputed domain name and configured this for email services, only to discover that corporate email was being received in volume which the Respondent had no desire to deal with manually.
There are however more significant problems with the Complainant’s submission on this topic. In the first place, the evidence which it has produced does not appear to demonstrate either that the test email sent was automatically readdressed and sent back to the Complainant’s domain name or that it was sent across the Internet at all, or that the return email was received at the Complainant’s domain name, given that the printout of the “received” email simply displays a name and surname and not an email address containing a domain name.
In the second place, there is no evidence before the Panel which demonstrates whether the Respondent has taken any part in the alleged readdressing of email to the Complainant’s <airserbia.com> domain name. No email headers were produced demonstrating the path which the email took across the Internet. No contemporaneous MX record lookup at the disputed domain name was produced demonstrating that the disputed domain name was even configured to receive email services at the time when the test took place. Given that the Complainant was the previous registrant of the disputed domain name, it is just as likely in the Panel’s opinion that the Complainant is inadvertently demonstrating a legacy configuration of the Complainant’s own mailserver which was put in place as part of a transition from the disputed domain name to <airserbia.com>. Such a configuration would ensure that mail addressed within the organization to the disputed domain name is not sent out across the Internet but simply readdressed to the new domain name before being sent across the internal network only. This possibility cannot be excluded on the evidence before the Panel. In other words, in the absence of email headers and MX records associated with the test there is absolutely no evidence that the email which the Complainant addressed to the disputed domain name ever left the Complainant’s own network.
In the third place, even if it had been demonstrated that the email left the Complainant’s network and transited via the disputed domain name, only a single test was exhibited from a single sender’s email address. The Panel could not determine with any degree of confidence from this test that the Respondent has automatically “linked” its email server to that of the Complainant, as the Complainant contends. It is equally feasible that the test email was manually readdressed by the Respondent immediately upon receipt as a courtesy to the Complainant, it being clear from the email itself to whom it was addressed and by whom, thus demonstrating the address to which it should be forwarded. That said, the alleged immediacy or swiftness of the redirect is a further factor which in the Panel’s view points to an internal network configuration of the Complainant.
In conclusion, regarding the second limb of the Complainant’s case on bad faith, the Panel does not consider that the Complainant has demonstrated on the balance of probabilities that the Respondent is taking unfair advantage of or otherwise abusing the Complainant’s trademark by virtue of any alleged deliberate readdressing of email by the Respondent to the Complainant’s domain name. The Panel would have reached this conclusion even if such deliberate readdressing had been demonstrated to the Panel’s satisfaction.
In light of the above analysis on both limbs of the Complainant’s case on this topic, the Panel considers that this Complaint must fail for want of a demonstration on the balance of probabilities that the Respondent has registered and is using the disputed domain name in bad faith. Should subsequent evidence come to light which would demonstrate a bad faith intent on the Respondent’s part, it is possible that a future panel may entertain a refiling of this Complaint (on this topic, see section 4.18 of the WIPO Overview 3.0). However, if the Complainant chooses to refile the Complaint at some point in the future, this Panel would certainly expect the Complainant to provide a full and complete description of the history of the disputed domain name and the Complainant’s part in that history along with relevant new evidence.
Accordingly, the Panel finds that the Complainant has failed to establish the third element under the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: December 18, 2017