WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revevol SARL v. Whoisguard Inc. / Australian Online Solutions, Domain Support
Case No. D2015-0379
1. The Parties
The Complainant is Revevol SARL of Luxembourg, Luxembourg, represented by DLA Piper France LLP, France.
The Respondent is Whoisguard Inc. of Panama / Australian Online Solutions, Domain Support of Sydney, Australia.
2. The Domain Name and Registrar
The disputed domain name <revevol.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, 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 March 11, 2015, 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 March 12, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2015.
The Center appointed Dr. Clive Trotman as the sole panelist in this matter on May 11, 2015. 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 factual background is taken from information provided by the Complainant.
The Complainant has traded under the name Revevol (derived from the words revolution and evolution) since November 2006, later becoming Revevol France and Revevol Ltd. The Complainant has been offering Information Technology services under the trademark REVEVOL in the European Union, the United States of America and Australia.
The Complainant, as Revevol SARL or Revevol Ltd., is registered as the owner of trademarks as follows:
REVEVOL, IP Australia, registered December 14, 2011, registration number 1343604, classes 9, 35, 38, 41, 42;
REVEVOL, Community Trademark, Office for Harmonization in the Internal Market, registered September 16, 2008, registration number 005859137, classes 9, 35, 38, 41, 42;
REVEVOL, United States Patent and Trademark Office, registered February 24, 2009, registration number 3580681, classes 9, 38, 35, 41, 42;
REVEVOL, International Trademark (Australia, United States (Federal)), WIPO ROMARIN database, registered October 26, 2007, registration number 948037, classes 9, 35, 38, 41, 42.
Background information about the Respondent is taken from that provided by the Complainant.
According to the Complainant, the guiding mind of the Respondent, hereafter "SJ", was initially one of the three founders of Revevol Ltd. In 2007 there was a parting of the ways between this person and the other two founders, hereafter "LN" and "LG", after which the Complainant could no longer access the disputed domain name. SJ is also the founder and CTO of Australian Online Solutions Pty. Ltd. (hereafter "Australian Online Solutions"), founded in 1998.
The disputed domain name <revevol.com> was first registered on November 27, 2006, and transferred to Revevol Ltd. in September 2007. About November or December 2007 the disputed domain name was transferred to Australian Online Solutions.
5. Parties' Contentions
The Complainant has produced copies of online documentation in evidence of its rights in the trademarks listed in section 4 above.
The Complainant contends that the disputed domain name <revevol.com> is confusingly similar to the Complainant's trademark REVEVOL, which has been in use since November 2006. It is submitted that the
generic Top-Level Domain (gTLD) designation ".com" of the disputed domain name should not be taken into consideration in the determination of confusing similarity.
An affidavit appended to the Complaint and incorporated by reference, signed by the two founders presently remaining with the Complainant, LN and LG, makes a number of allegations, including the following:
that the three founders, SJ, LN and LG, came together while doing other work. The project needed a domain name and the now-disputed domain name was registered for the purpose by SJ through Australian Online Solutions, which company he in fact owned. At the conclusion of the project the three founders registered the company name Revevol Ltd. in Ireland on April 19, 2007, the three founders becoming shareholders and directors;
that it was agreed SJ would transfer ownership of the domain name <revevol.com>, which was not then disputed, to Revevol Ltd., and this was done in September 2007;
that it became necessary to call upon the shareholders for more capital. SJ did not contribute;
that on November 28, 2007, the disputed domain name was found to have been transferred out of the ownership Revevol Ltd., to an unknown owner, and the Complainant's access to it became disabled. Terms offered by SJ for its return, including shares, were held to be unacceptable to LG and LN. The Complainant depended on its domain name and email system, and a new Internet presence was quickly established under a ".eu" registration;
that the Respondent registered a trademark for REVEVOL in Australia in 2008, however the Complainant, on the basis of prior use in Australia, was granted REVEVOL trademark in Australia in December 2011.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant states that it has not licensed or authorised the Respondent to hold or transfer the ownership of the disputed domain name. The Respondent does not own any trademark or other rights in the trademark REVEVOL, which is exclusively the Complainant's trademark.
The Complainant says that the Respondent is not and has never been known under the name "Revevol" and has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant says the disputed domain name is inactive, with no plausible legitimate use, and submits that this constitutes use in bad faith in the circumstances.
The Complainant considers that the Respondent was aware of the existence of the Complainant's trademark at the time of acquiring the disputed domain name, and when it was subsequently renewed. The disputed domain name was therefore acquired and renewed in bad faith.
The Complainant contends that in the circumstances, the Respondent's use of a privacy service in order to hide its identity is evidence of bad faith. The Respondent has registered the disputed domain name for the purpose of causing damage to the Complainant's business.
The Complainant has cited a number of previous decisions under the Policy that it considers to be relevant to its Complaint.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The decision as to who should be named as the Respondent in cases involving a privacy service is not entirely settled, as discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at paragraphs 3.9 and 4.9. The Respondent was initially named as the privacy service, Whoisguard Inc. As a result of the Center's enquiries, the underlying registrant was disclosed to be Australian Online Solutions. The Complainant amended the Complainant stating this, and naming Australian Online Solutions as the Respondent. As notified to the Complainant by the Center on March 11, 2015, determination of the identity of the Respondent is at the Panel's discretion. In this instance the Panel has decided to retain both Whoisguard Inc. and Australian Online Solutions as Respondents. Since in the Panel's opinion a single Respondent has used different identities, the Respondent will be referred to in the singular.
A. Identical or Confusingly Similar
The Complainant's International Trademark number 948037 (Australia, United States) having been applied for on April 26, 2007, was registered on October 26, 2007, which appears to be earlier than the date on which the disputed domain name was transferred from the Complainant. It is of little consequence that the Complainant's additional trademarks were registered later, as paragraph 4(a)(i) of the Policy is in the present tense and requires that the Complainant has rights in a trademark.
The Panel is satisfied that the Complainant has rights in the registered trademark REVEVOL. The disputed domain name is <revevol.com>. Disregarding the generic Top-Level Domain (gTLD) designation ".com", the disputed domain name is identical to the Complainant's trademark, and the Panel so finds in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted a prima facie case to the effect that the Respondent has not been licensed or authorised in any way to use the Complainant's trademark REVEVOL, and that it is exclusively the Complainant's trademark.
Paragraph 4(c) of the Policy provides for the Respondent to refute the Complainant's prima facie case in the following terms, in particular without limitation:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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".
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Complainant says that the Respondent is not and has never been known under the name Revevol and has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant states that it has never allowed the Respondent to register or to use the disputed domain name. The Complainant also notes that SJ registered a trademark for REVEVOL in Australia in 2008 to legally justify the ownership of the disputed domain name and without ever using this trademark to do any business in Australia of anywhere else in the world.
The Respondent has not contested the Complainant's assertions and the Panel cannot conceive of any way in which the Respondent could reasonably fulfil the provisions of paragraph 4(c) of the Policy or otherwise demonstrate any rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
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.
The Complainant has also stated, in the appended copy of an affidavit signed by the two directors LN and LG, that SJ stated terms for the transfer of the disputed domain name back to the Complainant, including shares, that were unacceptable to the Complainant. The Respondent has not contested this.
On the evidence produced, the Panel finds the effective date of registration of the disputed domain name to be the date of its acquisition by the Respondent. That date is uncertain and it is sufficient for it to be taken as after the record date of September 30, 2007, and before the record date of December 11, 2007.
Paragraph 2 of the Policy governs the Respondent's representations at the time of registration:
"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that
(a) the statements that you made in your Registration Agreement are complete and accurate;
(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
(c) you are not registering the domain name for an unlawful purpose; and
(d) you will not knowingly use the domain name in violation of any applicable laws or regulations.
It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights".
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.
On the evidence presented, and on the balance of probabilities, the Panel finds circumstances indicating that the Respondent acquired the disputed domain name primarily for the purpose of transferring it to the Complainant for valuable consideration, including shares, most likely in excess of registration costs, and has attempted to do so. Accordingly the Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith within the terms of paragraph 4(b)(i) of the Policy.
The Wayback Machine ("www.archive.org"), at least as early as January 26, 2009, had a record of the disputed domain name bearing the name and logo of Australian Online Solutions and an announcement that the disputed domain name had been suspended indefinitely. Insofar as the disputed domain name might be claimed not to be in overtly active use, nevertheless it continues to be held for some purpose, which it may reasonably be concluded, in the absence of evidence to the contrary, includes its initial use as a bargaining asset. Having regard to all the evidence including the Respondent's lack of consultation over the transfer of the disputed domain name, its transfer through a privacy service, the lack of any acknowledgement of the Complaint, and the findings of bad faith and lack of rights or legitimate interests made above, the Panel finds the Respondent's passive holding of the disputed domain name to constitute use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Moreover, the Complainant has related damage it allegedly sustained as a direct result of its loss of control of the disputed domain name. The Complainant depended on the disputed domain name for its website, its day to day business, and its email system. Having lost control of these, the Complainant had to transfer its operations quickly to another domain name, notify its clients and rebuild its web presence. On balance, in the terms of paragraph 4(b)(iii) of the Policy the Respondent is found to have registered the disputed domain name in bad faith primarily for the purpose of disrupting the business of the Complainant, being a competitor (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: "The natural meaning of the word "competitor" is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor").
To the extent that paragraphs 4(b)(i) and 4(b)(iii) of the Policy both use the word "primarily", the Panel notes that the provisions of paragraph 4(b) of the Policy are without limitation.
The Respondent evidently acquired the disputed domain name and arranged for its registration in the name of the Whoisguard Inc. privacy service. The use of a privacy service by a registrant may be entirely legitimate. On the other hand it may be done with the intention of obstructing the service of a complaint, whether informal, legal, or under the Policy. Other actions of the Respondent in combination with its use of a privacy service, including its failure to respond to the Complaint, its provision of a "wrong" postal address and its automatic rejection (not in the language of the Complaint) of one email sent by the Center, lead the Panel to find that the circumstances of the use of a privacy service in this case are a compounding factor in the finding of registration and use of the disputed domain name in bad faith.
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 <revevol.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: May 18, 2015