The Complainant is AUSACORP, S.L of Barcelona, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Andrew David Dawson of Blackburn, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented.
The Disputed Domain Name <excelway.com> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 3, 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 August 9, 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 August 14, 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 August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. The Center received various email communications from the Respondent between August 10, and 17, 2018. The Response was filed with the Center on September 4, 2018. On September 12, 2018, the Complainant submitted an unsolicited Supplemental Filing.
The Center appointed John Swinson as the sole panelist in this matter on September 17, 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 AUSACORP, S.L, a company incorporated in Spain. According to the Complaint, the Complainant is in the business of designing and producing compact industrial machinery and vehicles for road maintenance. The Complainant was founded in 1956 and sells its products in 80 countries. “Excelway” is a new brand of the AUSA Group which was started more recently. The Complainant does not provide detail regarding the commencement date of “Excelway”.
The Complainant owns a Spanish registered trade mark for EXCELWAY, registered on September 25, 2012, with registration number 3033041 (the “Trade Mark”). The Complainant owns a registered domain name which incorporates the Trade Mark, being <excelway.eu>.
The Respondent is Andrew David Dawson, an individual of the United Kingdom. The Respondent registered the Disputed Domain Name on June 18, 2003. The Respondent has provided no further information regarding his business activities or use (or intended use) of the Disputed Domain Name.
The Complainant makes the following submissions.
The Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety.
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name and the Respondent does not have an association with the Complainant. The Respondent attempted to sell the Disputed Domain Name to the Complainant for GBP 16,250. The Respondent is not carrying out legitimate activity at the Disputed Domain Name nor is he commonly known by the Disputed Domain Name.
The Respondent sought an excessive amount of money to sell the Disputed Domain Name to the Complainant. The Trade Mark is well known and the Complainant operates a well-known company. The Respondent is not using the Disputed Domain Name for a legitimate purpose as it is clear that the website is a parking page with pay-per-click (“PPC”) links. The Respondent does not have any legitimate rights or legal standing that would justify his use of the Trade Mark.
The Respondent states that he registered the Disputed Domain Name on June 18, 2003. The Complainant filed the Trade Mark application on May 31, 2012, which is a considerable time after the registration of the Disputed Domain Name. Therefore, it is not possible that the Respondent knew of the Complainant at the time of registration.
The Complainant contacted the Respondent in May 2018 with a request to buy the Disputed Domain Name from the Respondent for GBP 6,000. The Respondent advised the Complainant that he would be prepared to sell the Disputed Domain Name for GBP 16,250. The Respondent was then contacted by a Domain Name broker who offered to purchase for GBP 6,000 (the same price as the Complainant offered). The Respondent assumes that the broker was a representative of the Complainant. The Respondent then lowered his price to GBP 14,750.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 onus of proving these elements remains on the Complainant.
The Complainant submitted a Supplemental Filing which the Panel has reviewed but essentially just restates the Complaint.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). In this case the Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety and no additional words have been added.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently resolves to a parking page with PPC links, not relating to the Complainant. The Respondent has not provided any evidence of other use of the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Complainant has provided evidence that the Respondent has used the Disputed Domain Name for PPC advertising, which presumably generates revenue.
The Respondent has not provided evidence of his rights or legitimate interests in the Disputed Domain Name. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, the first thing that a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
Where a respondent registers a domain name before the complainant’s trade mark rights accrue, a panel will not normally find bad faith on the part of the respondent (see WIPO Overview 3.0, section 3.8.1).
No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877).
In this instance the Disputed Domain Name was registered in 2003. The Trade Mark was filed on May 31, 2012, 11 years after the Disputed Domain Name was registered. While the Complainant has provided lengthy details about its business, curiously, these details do not include the date on which the Complainant commenced its “Excelway” business.
It is open for the Panel to assume that the business commenced sometime around 2012, when the Trade Mark was filed, and not prior to 2003 (certainly not without evidence from the Complainant as to an earlier use in commerce date), when the Disputed Domain Name was registered, as would be necessary to establish bad faith registration. The Complainant has provided no evidence and has made no submissions to suggest otherwise.
As stated by the panel in Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335:
“In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the [trade mark] at the time of registration. In this Panel’s view, therefore, the Domain Name cannot conceivably have been registered in bad faith.”
The same reasoning applies here. The Complainant has not provided any evidence, nor has it even attempted to make any argument, as to why the Respondent knew or should have known of the Complainant or its future business operations at the time it registered the Disputed Domain Name. See Mister Auto SAS v Wharton Lyon & Lyon WIPO Case No. D2018-1330.
The Complainant points to the Respondent’s attempt to sell the Disputed Domain Name at a high price as evidence of registration of bad faith. However, the Complainant neglected to inform the Panel that the Complainant approached the Respondent to attempt to purchase the Disputed Domain Name.
It could not possibly have been the case that the Respondent registered the Disputed Domain Name for the primary purpose of selling the Disputed Domain Name to the Complainant, as the Complainant’s business did not exist when the Disputed Domain Name was registered. Without this, based on the material before the Panel, there is no basis on which the Panel can find that the Respondent registered the Disputed Domain Name in bad faith.
In light of the above, the Panel finds that the Complainant has not established the third element of the Policy.
In coming to a decision, the Panel must have regard to paragraph 15(e) of the Rules, and the following passage in particular:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes and abuse of the administrative proceeding.”
Reverse domain name hijacking (“RDNH”) is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Respondent has not sought a finding of RDNH in this case. However, it is open to the Panel to make such a finding without a request from the Respondent. In fact, the Panel in Dumankaya Yapi Malzemeleri SAN. VE TiC. A.S v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2015-1757 stated that “[i]f abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it”.
The Complainant neglected to address the fact that the Disputed Domain Name was registered prior to when the Trade Mark was filed. In the circumstances, assuming that the Complainant’s “Excelway” business commenced sometime around 2012 (but again, no evidence on this point was submitted by the Complainant), it is not possible for the Respondent to have known of the Complainant at the time the Disputed Domain Name was registered as the Complainant’s “Excelway” business did not exist. In these circumstances, the basis on which to find that the Respondent registered the Disputed Domain Name in bad faith are highly limited. The Complainant must have known this.
As stated by the Panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc., WIPO Case No. D2014-0557:
“When the Complainant filed the Complaint, the Complainant knew that there was no proper basis for the Complaint yet it went ahead and filed the Complaint. See Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403. In so doing the Complainant knew that it was accusing an innocent registrant of dishonesty (bad faith) in the hope that it could deprive the Respondent of the Disputed Domain Name.”
In this case, the Panel considers that the Complainant omitted or misrepresented key communications between the Complainant and the Respondent. The Complainant’s earlier offer to purchase the Disputed Domain Name was only disclosed by the Respondent. The Panel considers the Complainant filed the Complaint only after several failed attempts to purchase the Disputed Domain Name at what it considered to be a reasonable price.
The Panel considers the Complainant launched the proceedings out of desperation as its prior attempt to purchase the Disputed Domain Name from the Respondent were unsuccessful but without a reasonable chance of success and as such in the circumstances constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: October 1, 2018