WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gerald Hill v. Abdul Basit Makrani
Case No. D2013-1959
1. The Parties
The Complainant is Gerald Hill of Santa Barbara, California, United States of America (the “USA”), self-represented.
The Respondent is Abdul Basit Makrani of Sindh, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <caribbeandirect.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2013. On November 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification that the Center had received the Complaint, on November 19, 2013, the Respondent sent an email to the Center. The email from the Respondent stated that “Below you can see that I have received the complaint submitted at WIPO from the complainant and requests you to please send me the official copy of the filed document from your end which will helpful for me and/or my lawyer if I want to file response.” This email confirms that the Respondent was receiving communications from the Center in connection with this case.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on December 30, 2013. 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
According to the WhoIs details, the disputed domain name was first created in April 1999. The Registrar confirmed that the disputed domain name was transferred to it, in the name of the Respondent, on June 14, 2013.
The Complainant provides travel information services about Caribbean destinations and online links to travel related resources.
The Complainant has a registered mark for CARIBBEAN-DIRECT, registered on the principal register of the United States Patent and Trademark Office (hereinafter the “USPTO”) on September 11, 2001.
The Respondent operates a website at “www.abdulbasit.com”. From information in the Complaint about the Respondent’s website, it appears that the Respondent is a professional domain name investor, who buys and sells domain names.
The Complainant provides evidence of a series of email exchanges between the parties, first initiated by the Respondent, in which the Respondent approached the Complainant with an offer to sell the disputed domain name.
5. Parties’ Contentions
The Complaint is very brief. The Complainant refers to its registered marks for CARIBBEAN-DIRECT. It says that the disputed domain name is “nearly identical and confusingly similar” to that mark. The Complainant also says that the disputed domain name is confusingly similar to the Complainant’s domain name <carribean-direct.com> which it has operated for its principal website since 2001.
In relation to whether the Respondent has rights or legitimate interests, the Complainant says that there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s business is buying and selling domain names for profit, which the Complainant’s evidences by a screenshot of a website apparently relating to the activities of the Respondent.
The Complainant points out that, on November 4, 2013, the Respondent contacted the Complainant via email. His initial message was, "We own the domain name <CaribbeanDirect.com>. We thought your company Caribbean-Direct.com might take an interest in buying it." Over the next eight days, several emails were exchanged between the Complainant and the Respondent. The Complainant notified the Respondent of the existing trademark rights and, hoping to avoid any dispute, made an initial offer of USD 300. The Respondent declined the offer, but indicated "[...]we are looking to sell <caribbeandirect.com> once the right offer comes in […]". The Complainant stressed its trademark rights in its reply and asked the Respondent to reconsider the offer. The Respondent again declined the Complainant’s counter-offers, including a final offer of USD 1,000. The Respondent declined those offers, aspiring to sell the domain name for "around USD 5,000". The Complainant says that, at that point, it had little choice but to initiate these proceedings.
Essentially based on this evidence, the Complainant claims that the disputed domain name was acquired by the Respondent primarily for the purpose of selling the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. For this reason, the Complainant implies that the disputed domain name was registered and has been used in bad faith.
The Respondent did not reply to the Complainant’s contentions. However as stated above, the Respondent has submitted an informal email communication on November 19, 2013.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it “has rights” in a trademark. The Complainant has provided copies of registration certificates for the CARRIBEAN-DIRECT mark on which it relies and so meets this aspect of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to that mark. The Complainant argues that the disputed domain name is nearly identical or confusingly similar to its mark.
The only relevant difference between the Complainant’s CARRIBEAN-DIRECT mark and the disputed domain name is that the latter is not hyphenated. (It is well established that the “.com” extension, being a necessary function of the domain name, is to be disregarded for the purpose of comparison under this ground). A number of previous cases have found that a hyphen does not distinguish the domain name from a trademark in which a complainant has established rights. See e.g. Giorgio Armani S.p.A. v. lv kefeng, WIPO Case No. D2011-0740.
Accordingly, disregarding the hyphen and the “.com” extension, the Panel finds that the disputed domain name is identical to the Complainant’s registered mark.
B. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
While the Complainant has provided little evidence of its business reputation, it has made a bare prima facie case that the Respondent lacks rights or legitimate interests.
From the Complainant’s evidence of communications between the parties before the current proceedings, it is apparent that the Respondent claims rights in the disputed domain name because it is comprised of generic words. It is also evident that the disputed domain name was first created in 1999 (although there is no evidence that it was created by the Respondent at that time), almost 2 years before the Complainant’s mark was registered. This may suggest that the disputed domain name was first created for a purpose unconnected with the Complainant’s trademark.
However, and importantly, the issue under paragraph 4(a)(ii) is whether the Respondent has rights or legitimate interests. The determination of this issue is not affected by any rights of third parties to this dispute.
It is difficult for the Panel to conclude that the Respondent has such rights or legitimate interests. This is for the following reasons.
Firstly, while the disputed domain name may have been first created in 1999 without the Complainant’s mark in mind, it is not clear that this was the Respondent’s purpose when the disputed domain name was registered by him in June 2013. On the balance of probabilities, the only such purpose suggested in the case file was the Respondent’s apparent intention to sell the disputed domain name. Evidence which supports this conclusion is the uncontested emails between the parties, and information on the Respondent’s website (“www.abdulbasit.com”) which indicates that the Respondent trades in domain names.
Secondly, the Complainant’s mark is registered on the principal register of the USPTO. As noted previously in decisions under the Policy, “This registration is prima facie evidence of the validity of Complainant’s registration, and creates a rebuttable presumption that [the complainant’s] mark is inherently distinctive.” EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In the same vein, see e.g. Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903.
Thirdly, the Respondent has not come forward to argue that he has any such rights or legitimate interests, in the face of the Complainant’s prima facie case against him. Following the majority of panel authority on this issue, referred to above, this would by itself be sufficient for the Complainant to establish that the Respondent lacks rights or legitimate interests (See WIPO Overview 2.0, paragraphs 2.1).
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that there is evidence of registration and use in bad faith where the Panel finds that a respondent registered a 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 its out-of-pocket costs. The Complainant alleges that this is what the Respondent has done. The Complainant relies on the evidence of the Respondent’s approach to sell the disputed domain name.
The key issue in this case is whether the opportunity to sell the disputed domain name to the Complainant was the Respondent’s “primary” intention. While the resale of domain names may be a legitimate activity under the Policy (see Media General Communications, Inc. v Rarenames, WebReg, WIPO Case No. D2006-0964), paragraph 4(b)(i) of the Policy makes it clear that such a resale may be in bad faith if it is done to unfairly target a complainant’s trademark.
On balance, the Panel considers that the evidence in the present case is more suggestive that the Respondent was primarily motivated to sell the disputed domain name to the Complainant, for a sum obviously in excess of his out-of-pocket costs. According to the Registrar, the Respondent registered the disputed domain name in June 2013. A little over 3 months later, the Respondent contacted the Complainant directly with an unsolicited offer to sell the disputed domain name. There is no evidence that the Respondent contacted anyone else, or otherwise used the disputed domain name for a purpose unconnected with the Complainant’s mark.
The Complainant has a longstanding trademark registration. It seems unlikely that the Respondent would have been unaware of the disputed domain name’s value in that connection when he registered it. As evidenced in the Complaint, the Complainant has a presence on the Internet closely associated with its mark. The Respondent is in the business of trading domain names and obtaining a profit in recognizing domain names with potential value - which may include those with trademark value. The Respondent has filed no evidence in these proceedings, and so has not provided any evidence to the contrary.
The Panel therefore finds that the disputed domain name was registered and is being used 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 <caribbeandirect.com> be transferred to the Complainant.
James A. Barker
Date: January 13, 2014