The Complainant is Acubit A/S, Denmark, represented by Hjulmand & Kaptain, Denmark.
The Respondent is Ting Zhao, United States of America, self-represented.
The disputed domain name <acubit.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019, naming the Respondent as WhoisGuard Protected Registrant Org. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2019, 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 January 6, 2020, 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 amendment to the Complaint on January 8, 2020.
The Center verified that the Complaint, together with the amendment to the 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 January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Response was filed with the Center on January 28, 2020.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 7, 2020. 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 public company established in Denmark. It is a supplier of technology for locating human beings and objects worldwide.
The Complainant is the owner of European Union Trade Mark (“EUTM”) number 017784265 for the word mark ACUBIT, registered on November 23, 2018 in various classes.
The disputed domain name was registered on June 15, 2009.
The disputed domain name does not appear to have resolved to any active website.
The Complainant states that it is a start-up company which sets new technological standards in the locating of human beings and objects, and that its applications extend as far as identifying defects in machinery and dementia care.
The Complainant states that, in addition to its EUTM, its has numerous trademark applications pending worldwide. It has also registered 33 domain names comprising “acubit” and Top-Level Domains, including for example <acubit.dk>, <acubit.eu>, and <acubit.biz>. The Complainant states that: “it is essential to Acubit that the company is also the registrant of acubit.com.”
The Complainant submits that the disputed domain name is identical to its trademark ACUBIT.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the disputed domain name has never been active despite having been registered for more than ten years. It contends that, under Danish trademark rules, the registration or maintenance of a domain name which conflicts with a trademark is contrary to good practice. It also contends that it is “standard practice” for a domain name to be assigned to the relevant trademark owner. The Complainant states that: “the right to use Acubit.com is much more interesting and valuable to Acubit A/S than to the Defendant” and adds that the Complainant has invested considerable resource into its trademark.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that the Respondent registered the disputed domain name behind a “WhoisGuard” privacy service in order to disguise his identity. It repeats that the disputed domain name has never been actively used. It submits that the registration has prevented the Complainant from exploiting the value and potential of the disputed domain name and has therefore been maintained in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent states that he registered the disputed domain name in 2009, seven years before the Complainant was incorporated in 2016, and that he coined the term “acubit” at that time. The Respondent states that he has renewed the registration every year since its first registration.
The Respondent submits that a domain name can have many uses other than for the purposes of a public website, such as development, testing, or hosting. He also submits that there are over 1.5 billion websites on the world wide web of which less than 200 million are active.
The Respondent denies that the use of a privacy service constitutes evidence of bad faith. He contends that privacy services are commonly used to protect personal data from abuse and that many, if not all, domain name registrars offer privacy services.
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.
The Complainant has established that it is the owner of an EUTM for ACUBIT. The Panel finds the disputed domain name to be identical to the Complainant’s trademark, ignoring the generic Top-Level Domain (“gTLD”) “.com” which is to be disregarded for the purpose of comparison. The date of registration of the Complainant’s trademark is irrelevant to the test under paragraph 4(a)(i) of the Policy, which is designed only to establish the Complainant’s standing to bring the proceeding.
In the light of the Panel’s findings concerning bad faith, below, it is unnecessary to consider whether the Respondent’s apparently passive holding of the disputed domain name gives rise to rights or legitimate interests in the disputed domain name. The Panel observes, however, that the Complaint requires to be determined under the terms of the Policy and not according to any national rules of trademark practice as suggested by the Complainant.
Under paragraph 4(a)(iii) of the Policy, the Complainant must establish both that the disputed domain name was registered in bad faith and that it has been used in bad faith (the so-called “conjunctive requirement”).
The disputed domain name was first registered on June 15, 2009. The Complainant does not assert that the disputed domain name was acquired by the Respondent on any later date, and there is no evidence in the Registrar’s responses to the Center or elsewhere within the case file which points to any such later acquisition by the Respondent. The Complainant’s trademark registration is dated 2018 and it provides no evidence of any commercial activity under the ACUBIT mark prior to its date of incorporation in 2016. The Panel therefore concludes, on the available evidence, that the Respondent registered the disputed domain name at least seven years prior to the Complainant’s first use of its trademark in question.
In these circumstances, even if the disputed domain name were currently being used in bad faith (which is not the Panel’s view), there can be no finding that the disputed domain name was registered in bad faith. The Respondent cannot have been aware of the Complainant’s trademark when he registered the disputed domain name as it did not exist at that date. While panels under the UDRP have historically explored the concepts of retroactive bad faith implied by a respondent’s present conduct, or a breach of the terms and conditions of registration, these approaches have not been followed in subsequent cases (see e.g. paragraph 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Concerning the use of the disputed domain name, the Panel rejects the Complainant’s submission that the Respondent’s apparently passive holding of the disputed domain name necessarily implies bad faith. While a passive holding is not a bar to a finding of bad faith if all the circumstances of the case point to that conclusion, the Panel finds there to be no such circumstances in this case.
For the reasons given by the Respondent, the Panel also rejects the Complainant’s contention that the Respondent’s use of a privacy service necessarily implies bad faith on his part.
Further, the Panel dismisses the Complainant’s submissions that it is “essential” for it to possess the disputed domain name and that the disputed domain name “is much more interesting and valuable” to the Complainant than to the Respondent. These submissions are fundamentally commercial in nature and do not have a bearing on the necessary considerations under the Policy.
The Panel finds, therefore, that the Complainant has failed to establish the disputed domain name was registered and has been used in bad faith.
Under paragraph 15(e) of the Rules:
“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 an abuse of the administrative proceeding.”
The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above, including in particular the fact that the disputed domain name had been registered many years before the Complainant began using the trademarks in question. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. The Panel finds that that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Steven A. Maier
Date: February 14, 2020