WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Développements Angelcare Inc. v. Radio plus, spol.s r.o.
Case No. D2012-1210
1. The Parties
The Complainant is Les Développements Angelcare Inc. of Québec, Canada, represented internally.
The Respondent is Radio plus, spol.s r.o. of Praha, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <angelcare.com> is registered with Gransy, s.r.o. d/b/a subreg.cz.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2012 in English. On June 14, 2012, the Center transmitted an email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.coma request for registrar verification in connection with the disputed domain name. On June 15, 2012, Gransy, s.r.o. d/b/a subreg.cz 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. Gransy, s.r.o. d/b/a subreg.cz also disclosed that the Registrar of the disputed domain name was not Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com but was Gransy, s.r.o. d/b/a subreg.cz and informed the Center that the language of the registration agreement was Czech.
On June 20, 2012, the Center transmitted an email to the Parties in both the Czech and the English language regarding the language of the proceeding. On June 20, 2012, the Complainant requested for English be the language of the proceeding. On June 21, 2012, the Respondent requested for Czech to be the language of proceeding.
On June 22, 2012, the Center received an email communication from a third-party regarding these proceedings. The Center replied on June 25, 2012 by email to this communication stating that without submission of further evidence of the proper identity of the Respondent and/or any connection this third-party may have with the Respondent or these proceedings, the Center did not envisage taking further action in relation to the email communication received on June 22, 2012.
On June 25, 2012, the Center transmitted an email to the Complainant requesting a translation of the Complaint into Czech. Furthermore, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by Gransy, s.r.o. d/b/a subreg.cz, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an amended Complaint on June 27, 2012 and a translated Complaint on July 3, 2012.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 24, 2012. The Center received a number of email communications from the Respondent in English. The Response was filed with the Center on July 24, 2012 in English.
The Center appointed Brigitte Joppich, Ladislav Jakl and The Hon Neil Brown Q.C. as panelists in this matter on August 16, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
On August 27, 2012, the Panel issued Procedural Order No. 1 to the parties, requesting the Respondent to provide evidence that it registered the disputed domain name in 1999 and has owned it ever since. The Respondent filed a reply to Procedural Order No. 1 on August 31, 2012. The Complainant replied to the Respondent’s submission on September 5, 2012.
4. Factual Background
The Complainant has been trading baby monitors under the mark ANGELCARE since 1997 and, over the years, has been using the trademark ANGEL CARE in relation to other products such as nappy disposal pails and nappy bags.
The Complainant is the registered owner of numerous trademark registrations for ANGEL CARE, inter alia Canadian trademark registration no. TMA519,974 ANGEL CARE, applied for on April 9, 1998 and registered on November 29, 1999, Community trademark registration no. 001189034 ANGEL CARE, applied for on April 26, 2007 and registered on February 8, 2008 and United States trademark registration no. 2,361,228 ANGEL CARE, applied for on May 7, 1998 and registered in June 27, 2000 claiming first use in commerce on July 15, 1998 (hereinafter referred to as the “ANGEL CARE Marks”). Furthermore, the Complainant is the registered owner of numerous domain names containing its trademark, inter alia <angelcare.ca>, registered on March 26, 2002, and <angelcare-monitor.com>, registered on September 14, 1999.
The disputed domain name was first registered on February 15, 1999, and is used in connection with a parking website with links to various products, including links to products offered by some of the Complainant’s direct competitors.
5. Parties’ Contentions
The Complainant contends that this is a so-called “cyberflight” case as the disputed domain name was allegedly transferred to the actual registrant after the Complaint was sent to the registrant at the time of the filing, i.e. ANGELCARE.COM Privacy Protect. Therefore, the Complainant addresses the Complaint against two registrants, ANGELCARE.COM Privacy Protect and Radio plus, spol.s r.o.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainant contends that each is given in the present case:
(1) The Complainant states that the disputed domain name is identical to the Complainant’s trademark as it contains the Complainant’s trademark in its entirety. The Complainant further states that Internet users looking for the Complainant are likely to be confused and misled by the disputed domain name when searching the Internet for products or services similar to those offered by the Complainant under the mark ANGEL CARE.
(2) The Respondents have no rights or legitimate interests in respect of the disputed domain name, as they are not authorized or licensed by the Complainant to use the ANGEL CARE Marks, as they are not affiliated or associated with the Complainant, and as the Complainant is not aware of any fair or noncommercial use of the disputed domain name.
(3) With regards to bad faith, the Complainant contends that ANGELCARE.COM Privacy Protect is involved in cyberflying and tried to disrupt the proceedings in order to make sure that the jurisdiction of the courts in case of an appeal would be in Czech Republic since this is where the Respondent and the new registrar both reside, which is an indication of bad faith. The Complainant further states that the disputed domain name is not used for any bona fide offering of goods or services but to is used to redirect Internet users to commercial sites in the fields where the Complainant is carrying out its own commercial activities and that ANGELCARE.COM Privacy Protect and the Respondent thereby have intentionally attempted to attract for commercial gain, Internet users to their website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliations, or endorsement of the website.
The Complainant further argues that it is a reasonable inference from the content on the website available at the disputed domain name that ANGELCARE.COM Privacy Protect and the Respondent knew of the Complainant’s business and wanted to exploit its trademark to divert Internet traffic from it, probably to benefit from pay-by-click arrangements with alternative suppliers, that ANGELCARE.COM Privacy Protect and the Respondent are using the disputed domain name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant’s trademark, that the current use of the disputed domain name causes great damage to the Complainant due to the misleading of its present clients and the loss of potential new ones and that ANGELCARE.COM Privacy Protect and the Respondent’ website has already received 1.9 million visitors. The Complainant finally contends that bad faith registration and use are further suggested by the fact that the Respondent has concealed its true identity as domain name holder when hiding behind ANGELCARE.COM Privacy Protect.
The Respondent states that there is only one Respondent, namely Radio plus, spol.s r.o., that the use of the privacy protection service is common, and that it did nothing wrong. With regards to the language of the proceeding, the Respondent states that the translation of the Complaint was “bad” and that it therefore replies in English.
The Respondent states that the change of the registrar happened before the Complaint was filed and that the Complainant's accusations of “cyberflying” are ridiculous. It further states that the transfer to the current registrar happened because it received suspicious emails some days before the receipt of the Complaint and chose to transfer the disputed domain name to its own jurisdiction to defend it if a UDRP proceeding should be lost, which does not constitute an act of bad faith.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent contends that the Complainant is not the only registered owner of trademarks or domain names containing “Angel Care” and that the term “Angel Care” is generic. It states that it was founded in 1991 and started acquiring domain names early after having realized that it might use them in the future, which constitutes a legitimate interest in the disputed domain name.
The Respondent further argues that the registration of the disputed domain name predates the registration of the Complainant’s first domain name <angelcare-monitor.com>, and that the Complainant’s first trademark registration for “ANGEL CARE” in Canada occurred on November 29, 1999, i.e. seven months after the registration of the disputed domain name, which therefore could not have been made in bad faith. The Respondent admits that the Complainant might have sold its products in Canada earlier, but states that the disputed domain name was not registered to disturb or profit from the Complainant’s business.
Finally, the Respondent is asking for a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
The first point to be dealt with is the Complainant's allegation that the Respondent was engaged in “cyberflight,”, i.e. attempted to avoid or delay an imminent administrative proceeding by changing details of the WhoIs data of the disputed domain name after notice that a complaint was filed. Such an action would contravene paragraph 8(a) of the Policy, which prohibits a respondent from transferring a domain name registration during a pending administrative proceeding.
The Panel finds that this is no case of “cyberflying”, as the Respondent did not change the WhoIs data in terms of changing ownership but only changed its registrar and took down the privacy protection. The Respondent’s actions did not avoid or delay the present proceedings. Consequently, the Panel will treat Radio plus, spol.s r.o. as the sole Respondent in this case and will not consider the prior registrant, ANGELCARE.COM Privacy Protect, as an additional respondent.
The second point the Panel has to address is the language of the present proceeding. The language of the Registration Agreement for the disputed domain name is Czech. The Complaint was first filed in English and subsequently translated into Czech. The Respondent thereupon filed its response in English, citing the poor quality of the Czech translation of the Complaint. Under these circumstances, the Panel finds that the parties have implicitly agreed on English as the language of the present administrative proceeding and therefore decides that English is acceptable as language of this proceeding.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s ANGEL CARE Marks and is identical to such marks. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the light of the Panel’s finding below (cf. 6.C.) it is not necessary for the Panel to come to a decision in this regard.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
With regard to the bad faith registration element, having carefully considered the facts contained in the case file, the Panel finds that the Complainant has not provided sufficient evidence with regard to the Respondent’s actual knowledge of the Complainant and its trademark rights at the moment of time the disputed domain name was first registered and that, therefore, the Complainant failed to meet its burden of proof in this regard.
The Complainant’s main argument in this regard – i.e. that the website available at the disputed domain name shows advertising from the Complainant’s competitors and that it is a reasonable inference from such content that the Respondents knew of the Complainant’s business and wanted to exploit its trademark to divert Internet traffic – is not sufficient in this case to prove bad faith registration. The Complainant has only provided evidence with regard to the actual use of the disputed domain name on June 7, 2012 but no evidence at all with regard to the use of the disputed domain name prior to this date. With this in mind, and noting that the content of parked websites is in general automatically generated, the Panel finds it hard to draw inferences from the actual content of the website available at the disputed domain name with regard to the bad faith registration element.
Furthermore, although the Complainant contends that it started selling its products in 1997 and claims first use in commerce in the United States of America in 1998, it first registered a domain name to offer its products online only on September 14, 1999, i.e. seven months after the registration of the disputed domain name. Furthermore, although the Complainant’s first trademark was applied for on April 9, 1998, i.e. before the registration of the disputed domain name, it was registered only afterwards, i.e. on November 29, 1999. On the record, the Complainant did not provide any evidence with regard to the actual scope of its business and the awareness of the public regarding the ANGEL CARE Marks at the time of the registration of the disputed domain name. Based on the facts and evidence provided by the Complainant, the Panel cannot conclude that the Respondent must have necessarily been aware of the Complainant when the disputed domain name was registered. In this regard, the Panel especially takes into account that the Respondent is located in Europe (Czech Republic), that the second level of the disputed domain name is not highly distinctive, that the Complainant itself started offering its products online only after the registration of the disputed domain name and that the Respondent (even if this Panel would be prepared to impose such an obligation on the Respondent in this case) most likely could only have become aware of the Complainant’s then-application for a trademark by searching the Canadian Intellectual Property Office database for trademarks before registering the disputed domain name.
Consequently, the Panel concludes that the third element of the Policy has not been met on the present record in these Policy proceedings and that the Complaint must be denied.
7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, paragraph 15(e) of the Rules provides as follows: “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.” As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations 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” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).
In the present case, where the Complainant has at least been doing business under a name identical to the second level domain name before the registration of the disputed domain name, where the content available at the Respondent’s website at the disputed domain name might constitute an infringement of the Complainant’s trademark rights and where the Complainant seems to believe in its rights in the disputed domain name in good faith, the Panel finds that the Complainant’s filing as such is not an abuse of the Policy.
For all the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Dated: September 10, 2012