WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nick Nifadeff v. Andre Schneider, DomCollect AG
Case No. D2014-1435
1. The Parties
The Complainant is Nick Nifadeff of Austin, Texas, United States of America (the “USA”), self-represented.
The Respondent is Andre Schneider, DomCollect AG of Zug, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <masterpage.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2014. On August 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2014, 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 by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 30, 2014 and September 5, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2014.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on October 16, 2014. 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.
Due to exceptional circumstances, it has been necessary to extend the decision due date in this case.
4. Factual Background
The Complainant is the registered proprietor of United Kingdom trademark UK00002573328 MASTERPAGE and device registered in international classes 16, 35, 38, 39, 40, 41 and 42 covering a wide range of computer and internet related goods and services. The words "master page" per se are generic words used in website development to describe a feature which enables the user to define common structure and interface markup elements. There is no evidence of the Respondent's use or reputation in the trademark. A Google search under "master page" or "masterpage" reveals no reference to the Complainant in the first 5 pages; all references are generic.
The WhoIs for the disputed domain name shows that it was created on August 10, 1995. As at August 14, 2014 the WhoIs for the disputed domain name showed that it was updated on August 9, 2014 and that it was then registered to a third party located in North Carolina, United States of America. As at August 20, 2014 the WhoIs for the disputed domain name showed that it was updated on August 19, 2014 and that it is now registered to the Respondent.
Screen captures shown in the Complainant’s Annex 3, and obtained independently from “www.archive.org”, show that up to about June 13, 2013 the website at the disputed domain name was active and was used to promote the sale of pagers and mobile phones. The disputed domain name does not currently resolve to a website.
The Complainant’s Annex 3 and Annex 7 show a screen shot of the website at the disputed domain name, which provides links to third party websites relating, inter alia, to web hosting and web design services. At the bottom of the screen there is a notice, stating that “This page is provided free to the domain owner by Sedo's Domain Parking” and also a notice, in English and German, stating:
“BUY THIS DOMAIN. This domain is For Sale! If interested click HERE. Your DomCollect Team.
The screen shot is stated by the Complainant to be “As of August 2014”.
The Complainant’s Annex 8 is a screen shot of a page of the website at Domain Tools which advertises the disputed domain name for sale “in partnership with Sedo”. The Complainant states that this was “In August” but does not indicate the date in August or the chronological order in which these screen shots were taken.
On August 15, 2014, the Complainant emailed the legal department of Sedo.com requesting cancellation of the notice for sale of the disputed domain name, alleging violation of its rights in its UK registration. In reply the Sedo legal department advised that as it was not the registrar for the disputed domain name, the only action it was able to take was to block the disputed domain name from its website and services and that it had been disabled from utilizing Sedo’s domain parking services.
No information is available about the Respondent save that, at its website at <www.domcollect.com> it states:
“DOMCOLLECT AG. DomCollect Worldwide Intellectual Property AG was established in 2005 with a view to acquire and monetize qualitative premium and generic domain names.
Owning a portfolio with thousands of domains, we have a visitor volume of more than a million of highly qualitative visitors per month available. We are in the market to enlarge our domain portfolio with premium domains and domain portfolios.
Our domains cover areas ranging from “A” like automobile to “Z” like zoo. This also applies to their traffic origins. Our domain portfolio is comprised of traffic from more than 20 different countries and languages.”
The Center's database of prior UDRP cases shows that the Respondent has been the object of four prior adverse decisions under the Policy. The corresponding database of the American Arbitration Forum reveals two further such cases.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its UK trademark registration for MASTERPAGE and device and that it provides computer programing movements and repair and consultancy services under that mark but provides no evidence of this. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has registered and used the disputed domain name in bad faith.
In support of its contention the Complainant contends that at the date of the Respondent’s registration as the owner of the domain name the Respondent knew, or should have known, of the existence of the Complainant's rights in the MASTERPAGE trademark. The Complainant refers to its email correspondence with the legal department of Sedo over the period August 3, 2014 to August 15, 2014 and to the fact that the disputed domain name was transferred to the Respondent shortly after that on August 19, 2014. The Complainant further asserts that the Respondent is not commonly known by the disputed domain name.
The Complainant further asserts the Respondent is using the disputed domain name to direct Internet users to third party sites on a pay-per-click basis (Annex 7 to the Complaint) or to an empty page. The Complainant also asserts that the Respondent is offering the disputed domain name for sale (Annex 8 to the Complaint).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in the Complaint the Complainant must show that:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent has no right or legitimate interest in the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
The onus is on the Complainant to show, on the balance of probability, each of the above circumstances (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WPO Case No. D2000-0847). It is the duty of the Panel to decide, on the basis of the case presented by the parties and on the evidence before it, whether or not that onus has been discharged. The Panel is entitled to further inform itself by limited reference to matters of public record (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5). Accordingly, even in cases such as this, where the Respondent has filed no response, the Panel must determine whether or not the Complainant has made out its case in relation to each of the above circumstances. While inferences may be drawn from the facts that the Respondent has failed to answer the Complainant's case and has been found to have acted in bad faith in previous cases, the burden remains on the Complainant to establish a prime facie case under each element of paragraph 4(b) of the Policy. As noted by the panel in Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465:
“…a default does not automatically result in a finding for Complainant. Rather, under Paragraph 4(a) of the Policy, it remains Complainant’s burden to establish that all three of the required criteria for a transfer of the domain name or other remedy have been met.”
“Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by Respondent is that the panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.”
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of a trademark registered in the United Kingdom which comprises, dominantly, the word “Masterpage”, together with the device of a turned page. The disputed domain name comprises the word “Masterpage” and is therefore, in the Panel’s opinion, identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant bears the burden of establishing a prime facie case that the Respondent has no right or legitimate interests in the disputed domain name. It has sought to do so on the basis that there is no evidence that the Respondent has trademark rights corresponding to the disputed domain name nor is there evidence that the Respondent is commonly known by the disputed domain name. The Complainant also contends that at the time of registration of the disputed domain name the Respondent knew or ought to have known of the Complainant’s rights in its trademark.
The Panel accepts the Complainant’s first contention. As to the second contention, as further discussed below under section 6.C., the Panel is not satisfied that the Complainant has established its case.
In light of the Panel’s findings under the third element of the Policy, it is not necessary for the Panel to further analyze the question of the Respondent’s rights or legitimate interests (or lack thereof) in the disputed domain name.
C. Registered and Used in Bad Faith
As indicated previously, the Complainant alleges in its Complainant that at the time of registration of the disputed domain name the Respondent knew or ought to have known of the Complainant’s rights in its trademark. The Complainant has provided no basis for this other than inferences which it draws from the history of the disputed domain name over the period August 9, 2014 and August 19, 2014 and its correspondence with the Sedo legal department.
On the evidence provided by the Complainant, it is not possible to determine the precise nature and chronology of the events leading up to the registration of the Respondent as the owner of the disputed domain name. So far as can be ascertained, the relevant events occurred between August 9, 2014 when the disputed domain name was registered to the previous registrant, and August 19, 2014 when it appears to have been transferred to the Respondent. At some time on or prior to August 15, 2014 the disputed domain name was advertised for sale at the website of “www.sedo.com” causing the Complainant to write to the legal department of Sedo.com requesting cancellation of the advertisement for sale. The Complainant did not write to the listed registrant of the disputed domain name at that time nor does it appear at any stage to have written to the Respondent. As noted by the Panel in section 4 of this Decision, the Complainant has annexed two screen shots displaying offers for sale of the disputed domain name. One of these, Annex 8 to the Complaint, states that the disputed domain name is “Available for sale by its owner through Sedo’s Domain Marketplace”. The other, at Annexes 3 and 7, bears a notice stating that “This page is provided to the domain owner free by Sedo’s Domain Parking” and also a notice, entitled “Buy this domain”, apparently by the Respondent, stating “This domain is for sale”. There is no indication in the Complaint or in the screen shots as to the date of these captures nor the chronology in which they occurred other than that, according to the Complainant, they each occurred in “August”.
The Complainant appears to be seeking to draw from these scant facts an inference that the transfer of the domain name from the previous registrant to the Respondent was carried out in bad faith and in knowledge of the Complainant’s rights. In the Panel’s view there is insufficient evidence in the case file to support that conclusion. There is no other evidence, such as reputation evidence, to show that the Complainant or its mark should have been known to the Respondent or its predecessor.
The Panel finds that the Complainant has failed to show that the disputed domain name was registered in bad faith. In the present circumstances, neither the free listing on Sedo’s Domain Parking nor the offer for sale on Sedo’s Domain Market Place are, without more, evidence of bad faith use. There is no clear evidence that the Respondent was, or should have been, aware of the Complainant’s claimed rights nor is there any reason why, absent reputation, the Respondent should have been aware of the Complainant’s UK trademark registration. In the Panel’s view, the inference which the Complainant seeks to draw from its correspondence with the Sedo legal department is too remote.
The fact that the Respondent has been guilty of bad faith in previous cases may indicate a propensity to disregard the trademark rights of others but does not establish that it has done so in this case. In each of those cases there was evidence that the relevant trademark was well-known and widely established. For example, in NC Numericable and Société Française du Radiotéléphone - SFR v. Andre Schneider / Domcollect AG, WIPO Case No. D2014-1378 the Panel noted that:
“The Complainants’ trademarks are commonly known, not only in France. Moreover, at the time of registration of the disputed domain names, containing both NUMERICABLE and SFR trademarks, the news about the merger of the companies was covered by media from all around the world.”
In Clarins v. DomCollect AG/Andre Schneider, WIPO Case No. D2014-0595, again the Panel noted:
“The Complainant's trademark CLARINS has an extensive reputation in a number of jurisdictions in relation to cosmetics and beauty products and services. The trademark itself is distinctive and has no relevant inherent meaning or significance. It is inconceivable that the Respondent was unaware of the Complainant's trademark and its attendant goodwill when the disputed domain name was registered.”
Likewise in Facebook, Inc. v. Andre Schneider / DomCollect AG, WIPO Case No. D2013-1183 and D3T v. DomCollect Distribution AG, Andre Schneider, WIPO Case No. D2013-1046, the marks involved were extremely well-known and non-generic.
That is not the case here there is no evidence of any use or reputation of the Complainant's mark. The Respondent carries on a business of buying and selling, inter alia, descriptive domain names. Absent evidence that it is knowingly attempting to profit from the reputation of another or other improper purpose, the Panel finds that is not action in bad faith.
As noted by the Panel in 5B Investments, Inc. v. RareNames, WebReg, WIPO Case No. D2008-0146:
“A number of panels have concluded that a respondent has a right to register and use a domain name to attract internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant's trademark in mind.”
The Panel therefore finds that the Complainant has failed to establish that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Date: November 13, 2014