WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red.Com, LLC v. Whois Privacy Protection Service by MuuMuuDomain / Masayuki Unate, Pier 13 Pte. Ltd.
Case No. D2018-1325
1. The Parties
The Complainant is Red.Com, LLC of Irvine, California, United States of America (“United States”), represented by Weeks Nelson, United States.
The Respondent is Whois Privacy Protection Service by MuuMuuDomain of Fukuoka, Japan / Masayuki Unate, Pier13 Pte. Ltd. of Kanagawa, Japan.
2. The Domain Name and Registrar
The disputed domain name <hydrogen.red> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, 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 June 19, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on June 21, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Japanese of the Complaint, and the proceedings commenced on June 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 25, 2018. 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 limited liability company organized under the laws of the State of Nevada, United States. It is a supplier of high performance digital, still and motion picture cameras and related products.
The Complainant is the owner of various United States trademarks for the mark RED, including United States trademark number 3,703,504 for the standard character mark RED, registered on October 27, 2009 for camera lenses in Class 9.
The Complainant is also the owner of United States trademark number 5,296,690 for the word mark HYDROGEN, registered on September 26, 2017 for photographic and other equipment in Class 9.
The disputed domain name was registered on October 27, 2014.
The disputed domain name does not appear to have resolved to any active website.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It states that it has traded prominently under the name and mark RED since at least 2005. It states that it introduced a new product named “Hydrogen” in 2017 and filed for the HYDROGEN trademark referred to above on July 5, 2017. It exhibits promotional material relating to the Hydrogen product and claims that, as a result of longstanding promotion and commercial success, both its marks RED and HYDROGEN have become well-known and are exclusively associated with the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent has no independent rights in the trademarks HYDROGEN or RED and that it has not commonly been known by a name corresponding to the disputed domain name. The Complainant further submits that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that a domain name comprised of well-known or dictionary words does not of itself confer any rights or legitimate interests on the registrant and that the Respondent must establish that it has used the disputed domain name in connection with the meaning of the words in question (ADAC e.V. v. Domain Administrator, Original Web Ventures Inc., WIPO Case No. D2013-0411).
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent’s lack of rights or legitimate interests in the disputed domain name, together with its failure to make any use of the disputed domain name, are prima facie evidence of bad faith. The Complainant contends that the Respondent is “cybersquatting” upon the disputed domain name and that the only meaningful explanation for its registration of the disputed domain name is an intent to sell it to the Complainant.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceedings
While the language of the registration agreement for the disputed domain name is Japanese, the Complainant has requested that the language of the proceeding be English, arguing that the disputed domain name is in the English language and that the Respondent operates a website (although not one to which the disputed domain name has resolved) at “www.pier13.club”, the content of which is in English. The Respondent having made no objection to the language of the proceeding being English, the Panel directs that the language of the proceeding be English.
6.2 Substantive Matters
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;
(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.
Even in a case such as this where the Respondent has failed to file a Response, it is still necessary for the Complainant to demonstrate that each of the above elements is present.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of United States registrations for the trademarks HYDROGEN and RED. The disputed domain name is <hydrogen.red> and is therefore identical to the Complainant’s trademark HYDROGEN, ignoring the generic Top-Level Domain (“gTLD”) “.red” which is typically to be disregarded for the purposes of comparison under paragraph 4(a)(i) of the Policy. In any event, the Panel notes that UDRP panels have recognized that where the applicable TLD and the second-level portion of the domain name reflect the trademark, panels may consider the domain name in its entirety. (see section 1.11.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The reasoning at section 1.11.3 of the WIPO Overview 3.0 has been extended to situations whereby the Complainant’s trademark is found solely within the TLD, under the “recognizability” standard. See Nu Pagamentos S.A. v. Pague Nu, Pague Números Soluções e Agenciamento Ltda., WIPO Case No. DNU2018-0002.
The Panel therefore finds that that the disputed domain name is identical or confusingly similar to both the HYDROGEN and RED trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submission referred to above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for the registration and use of the disputed domain name, or evidence of rights or legitimate interests in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. Moreover, the Panel accepts the Complainant’s submission that the mere registration of a domain name comprising dictionary terms does not of itself give rise to rights or legitimate interests unless the domain name has been used, or is at least demonstrably intended to be used, in connection with the relevant dictionary meaning (see e.g.,section 2.10 of the WIPO Overview 3.0). However, in light of the Panel’s findings below, the Panel makes no findings whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In order to establish bad faith for the purposes of the Policy, the Complaint must show both that the disputed domain name was registered and that it has been used in bad faith. It is also axiomatic that, in order to have registered the disputed domain name in bad faith, the Respondent must have been aware (or cannot credibly claim not to have been aware) of the Complainant’s trademark at the time the disputed domain name was registered.
In this case, while the Complainant’s trademark RED was first registered in 2009, its trademark HYDROGEN was not registered until 2017, some three years after the date of registration of the disputed domain name. Furthermore, according to the Complainant’s pleaded case, it introduced its Hydrogen product and filed the relevant trademark application in the course of 2017, there being no submission concerning any earlier use of that name by the Complainant.
In the circumstances, the Respondent cannot have been aware of the Complainant’s use of the mark HYDROGEN at the date the disputed domain name was registered, as that use by the Complainant only commenced three years later. While the Complainant’s use of the mark RED did predate the registration of the disputed domain name, the use of that dictionary term alone, and only as the relevant gTLD, is insufficient in the view of the Panel to give rise to any inference that the Respondent registered the disputed domain name <hydrogen.red> in order to take unfair advantage of the Complainant’s RED trademark.
In the circumstances, the Complainant is unable to establish that the disputed domain name was registered in bad faith and the Complainant necessarily fails.
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Date: July 30, 2018