The Complainant is Compañía Logística de Hidrocarburos CLH, S.A. of Madrid, Spain, represented by PONS IP, Spain.
The Respondent is DropCatcher.Info of Washington, D.C., United States of America / Badminton, Inc. of Washington, D.C., United States of America, represented by Steven Rinehart and Stevan Lieberman, United States of America.
The disputed domain name <clh.info> is registered with Alfena, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 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 May 16, 2018 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 May 21, 2018.
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 May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Response was filed with the Center on June 3, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on June 11, 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.
The Complainant is a large oil transportation and storage company, operating primarily in the Spanish market, with its headquarters in Madrid, Spain. Its operating income for its 2016 financial year was approximately EUR 711 million. The Complainant also trades outside Spain, through subsidiaries in the United Kingdom of Great Britain and Northern Ireland, Ireland and Oman.
The Complainant owns a number of trade mark registrations for CLH, both in Spain and in other territories. Its first CLH-related trade mark was registered in 1993. The Complainant’s CLH marks are almost entirely in stylized form and many are used in combination with a variety of different logos. They include, by way of example only, European Union Trade Mark registration number 013841101 for CLH (as a figurative mark) registered on September 29, 2015 in classes 16, 37, 40, 41, and 42.
The Complainant also owns a number of CLH-related domain names, including <clh.es>, <clh.energy>, and <clh.group>.
The Respondent is a company based in Washington D.C., United States of America. The disputed domain name was registered by it on September 24, 2006. As at the time the Complaint was submitted, it redirected to a website offering it for sale for USD 2,888.
The Complainant says that the disputed domain name is identical or confusingly similar to its CLH trade marks. The services the Complainant provides in Spain and other countries are very extensive, its reputation has been acknowledged by a number of industry awards and its CLH-related trade marks have acquired a global and international character. As a result of the fame of its marks, the Complainant is entitled to protection against the use by third parties of CLH, even if the third party use is for goods and services dissimilar to those for which the Complainant’s trade marks have been registered.
The Complainant asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The identity of the initial registrant of the disputed domain name in 2006 was initially protected by a privacy service. The Complainant has been unable to find any CLH trade marks registered on behalf of the Respondent and the Complainant has neither authorized nor granted a licence to the Respondent to register and use the disputed domain name or its CLH marks. Only the Complainant has the right to use its marks.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant is a Spanish company, known worldwide, with extensive protection in its CLH trade marks. The Respondent was, or should have been, aware of the Complainant’s marks prior to registering the disputed domain name. If the Respondent had made the appropriate searches, it would have realised that, by registering the disputed domain name, it would be infringing the Complainant’s trade marks.
The Respondent used a privacy service when it registered the disputed domain name in September 2006 in order to prevent third parties from knowing it was the underlying registrant.
The Complainant’s searches have established that the disputed domain name was registered and the registration maintained in order that the Respondent could procure an offer from an eventual buyer of it. The Complainant has established that the disputed domain name has been for sale for USD 2,888, which is higher than the costs directly related to the registration and maintenance of the disputed domain name. See also the decisions of previous UDRP panels including The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, WIPO Case No. D2000-0124 and the comments (in translation from the original Spanish) of the panel in J. García Carrión, S.A. v. Mª José Catalán Frías, WIPO Case No. D2000-0239, that “the one who registers a domain name in bad faith will use it in bad faith, as the bad faith is bound to the knowledge a person had at the time of registration of damaging, without legitimate cause, the rights of a third party”.
The Respondent submits that whilst the Complainant has alleged that it has a large number of trade marks which are identical to the disputed domain name, the majority are either stylised marks or word marks protecting expressions which are not identical to the disputed domain name. The only word mark identical to the disputed domain name is registered in Andorra.
The Respondent has reviewed trade marks incorporating the expression “clh” at the United States Patent and Trade Mark Office. The Complainant has never filed for trade mark protection for CLH in the United States of America, but four other parties have done so. Moreover, further searches establish that 19 other parties besides the Complainant have attempted to register CLH exclusive of other terms and there are 15 separate organisations which claim that CLH is an abbreviation/acronym for them. This establishes that the term “clh” is generic and that is why the Respondent acquired it.
The Respondent’s use of the disputed domain name constitutes use in connection with a bona fide offering of goods and services; see, for example, GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc), WIPO Case No. D2002-0189. The fact that the disputed domain name is generic and usable for any variety of generic purposes further establishes the Respondent’s legitimate interest in it.
The Respondent says that it is a good faith registrant of the disputed domain name. It draws attention to publications which indicate that, since the year 2000, every three letter “.com” generic Top-Level Domain (“gTLD”) has been registered as a domain name and, since 2013, all four letter “.com” gTLDs have also been registered as domain names. Three letter gTLD domain names are extremely valuable as generic abbreviations, and this is what motivated the Respondent to register it. Many UDRP panels have found in favour of respondents who have registered three letter domain names for bona fide purposes; see ETH Zürich (Eidgenössische Technische Hochschule Zürich) v. Andre Luiz Silva Rocha, Construtora Norberto Odebrecht S/A, WIPO Case No. D2016-0444.
There are many decisions under the Policy in which domain name resellers and other Internet businesses have been found not to have acted in bad faith when acquiring and offering for sale three and four letter domain names and/or descriptive/generic domain names; see SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566 in which the panel commented that “the statement that an offer to sell a domain name which corresponds to a trademark is itself evidence of bad faith is simply wrong. Carrying on business in registering descriptive or generic domain names is not of itself objectionable”. The same is true in this case.
The Respondent argues that the Complainant must show that the Respondent registered the disputed domain name to take advantage of the confusion between the disputed domain name and the Complainant’s rights. It has failed to do so. The Respondent did not register the disputed domain name for the purpose of selling, renting or transferring it to the Complainant nor has the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name nor has it engaged in a pattern of such conduct.
The disputed domain name was registered in September 2006, nearly 12 years before the current proceedings were commenced.
The Complainant has made a general statement that the Respondent has acted in bad faith without showing that this is actually the position.
Laches (delay) can now present a bar to a successful complaint; see, for example, Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin, WIPO Case No. D2012-2502.
Finally, the Complainant had no bona fide basis for bringing these proceedings under the Policy and should be found to have engaged in Reverse Domain Name Hijacking (“RDNH”) under paragraph 15(e) of the Rules. RDNH occurs where a complainant knows that there was no plausible basis for a complaint. See, for example, Supremo n.v./s.a v. Rao Tella (supremo.com), WIPO Case No. D2001-1357.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
The Complainant has produced evidence that it owns a number of trade marks which incorporate the letters “clh”.
The Respondent is correct in asserting that the majority of the Complainant’s CLH trade marks are either figurative marks of which “clh” is merely an element and/or comprise marks in which “clh” is used in combination with other words.
The fact that the marks are figurative does not itself prevent them from being considered under this element of the Policy (see section 1.2.3 and section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Moreover, as the Respondent acknowledges, the Complainant does own a trade mark in Andorra which comprises solely the letters “clh”. For the purposes of this element of the Policy, it is not necessary for the Complainant to rely on a plethora of registered trade marks. As explained at section 1.2.1 of the WIPO Overview 3.0 a single mark will suffice; “where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
For the purposes of comparing the disputed domain name with the Complainant’s trade marks, the gTLD (“.info”, in the case of the disputed domain name) is typically disregarded as a technical requirement of registration. The disputed domain name is accordingly identical to the Complainant’s Andorran trade mark for CLH and also to its CLH figurative marks where the word component comprises CLH solus.
The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
In assessing the Parties’ contentions in relation to the second and third elements of the Policy the Panel first deals with the Respondent’s assertions in relation to laches. It is not the consensus position of panelists that “laches now provides a bar to a complainant’s UDRP claims after a sufficient period of time has passed” and moreover the concept is not formally part of the Policy. But delay can be a factor for a UDRP panel to consider as explained by the panel in Uline, Inc. v. Bhavna Babaria, WIPO Case No. D2015-0462; “lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name”.
In these proceedings, the Panel notes that the Complainant has not offered any explanation as to why a period of almost 12 years elapsed between the registration of the disputed domain name and the commencement of these proceedings; nor has the Respondent shown any particular reliance on such position. That is taken into account by the Panel as part of its overall assessment of the Parties’ contentions.
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The position of registrants who buy large volumes of domain names for re-sale, typically including three and four letter domain names, has been the subject of many decisions under the Policy which have addressed whether a registrant who purchases three or four letter domain names for resale should be considered, in appropriate circumstances, to have used such a domain name in connection with a bona fide offer of goods and services.
The purchase and sale of domain names can constitute a legitimate interest on the part of a registrant, even if a third party has trade mark rights which are similar or identical to the domain name. See, by way of example, Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (relating to <kis.com> where the panel commented that “Under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. …. Respondent’s interest in the Domain Name “kis.com” appears to be unrelated to Complainant’s trademark, and Respondent thus may well have a legitimate interest in the Domain Name”. See also Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (<lfo.com>) where the panel commented that; “Use of short terms that may be appropriate for a vanity email business, or even for sale, is a legitimate business model”. Finally see Greenfort Partnerschaft von Rechtsanwälten mbB v. CheapYellowPages.com, WIPO Case No. D2016-0796; “The Majority of the Panel is of the view that domain name resellers in general may have legitimate interests in the domain names being offered for sale at least where such domain names do not consist of coined terms, so that such domain names could be re-sold to many possible legitimate users rather than being of value only to particular trademark owners”.
Section 2.10.1 of the WIPO Overview 3.0 considers the registration of acronyms as domain names and explains that; “In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights”.
The Respondent would have known that there would be many parties, who either used CLH as a trade mark or an acronym in some other context, who might be interested in purchasing the disputed domain name; as the Respondent admits, that was the reason it registered the disputed domain name. However, there is nothing to suggest that the Respondent had any awareness of the Complainant or its business at the time of registration. The position is similar to that considered by the panel in to De Lage Landen International B.V. v. Steve Thomas, WIPO Case No. D2017-2045 “it seems fanciful in the extreme to suggest Respondent chose the Disputed Domain Name… because of any perceived connection with the Complainant, given there is no credible evidence suggesting why the Respondent should have been aware of the Complainant at all”.
If the Respondent chose the disputed domain name with no actual or constructive knowledge of the Complainant and therefore had no intention to trade off its trade mark rights, there is no basis for finding that it did not have a right or legitimate interest in the disputed domain name. In this respect, the Panel agrees with the comments of the panel in ETH Zürich (Eidgenössische Technische Hochschule Zürich) supra;
“The Panel accepts that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters”.
The fact that the Complainant has established that its CLH marks (dating from 1993) are well known in Spain falls short of establishing, on a balance of probabilities, that their fame was such that the Respondent (based in another country, in which the Complainant neither trades nor has any registered trade marks) was, or should have been, aware of those marks as at the time it registered the disputed domain name in 2006.
The Panel accordingly finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
Whilst the finding in respect of the Complainant’s failure to establish that paragraph 4(a)(ii) of the Policy has been fulfilled is determinative of these proceedings, the Panel will briefly consider the Parties’ contentions in respect of bad faith registration and use.
First, the use of a privacy service by a registrant can be a factor which is considered as part of an overall assessment of bad faith but does not, in itself, establish it; see Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954.
Paragraph 4(b) of the Policy set out, without limitation, four circumstances which, if found by a UDRP panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(i), which the Complainant asserts is applicable to the current circumstances, provides, in summary, that bad faith registration and use will be found if a respondent has registered a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or a competitor of it for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
However, paragraph 4(b)(i) requires some form of targeting (or, at least, awareness) of a complainant and its trade mark rights by the respondent as at the time of registration of the domain name. This is denied by the Respondent and there is no evidence put forward by the Complainant to question its position. The Complainant asserts that its fame was such that the Respondent should have had constructive notice of its rights. The repute of the Complainant’s CLH mark is, perhaps, not quite as extensive as the Complainant contends but in any event, the Respondent acknowledges that there will have been multiple parties with trade mark rights in CLH who might have been interested in acquiring the disputed domain name and there is nothing to suggest that it could, or should, have identified the Complainant as having any particular claim to the disputed domain name over and above the other parties.
None of the other circumstances set out at paragraph 4(b) of the Policy are of application and the Panel accordingly finds that the Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith.
The Respondent has asserted that the Panel should make a finding of RDNH by the Complainant. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides that, if a panel finds that the complaint was brought in bad faith, it shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Section 4.16 of the WIPO Overview 3.0 sets out a number of reasons which have been articulated by UDRP panels as reasons for finding RDNH. These include facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements, facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, unreasonably ignoring established Policy precedent and basing a complaint on only the barest of allegations without any supporting evidence. Moreover, some UDRP panels have held that a represented complainant should be held to a higher standard.
As the majority of the panel commented in Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”.
However, the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. Moreover, whilst the Complaint was unlikely to succeed, it was perhaps, not doomed to certain failure; notable in this regard is that the Complainant’s trademark rights predate the disputed domain name by over a decade. RDNH is not necessarily found simply because a complaint is weak or misconceived. Furthermore, not every case where a complainant’s attempt to recover a disputed domain name comprising an acronym, in broadly similar circumstances has led to a finding of RDNH; see, for example, ETH Zürich (Eidgenössische Technische Hochschule Zürich) supra.
Lastly, the definition of RDNH requires some element of bad faith. The Complaint was weak but a number of the indicia of a complainant’s conduct which are sometimes associated with RDNH, such as untrue assertions of fact, inappropriate personal attacks on the integrity of a respondent or heavy-handed conduct are not present. It is certainly not essential that such factors are present, but the Panel is required to make an overall assessment as to whether a finding of RDNH is appropriate in these proceedings.
In the circumstances outlined above, and whilst the merits of the Complainant’s claim were not terribly strong, the Panel declines, by a very narrow margin, to make a finding of RDNH.
For the foregoing reasons, the Complaint is denied.
Date: June 25, 2018