WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rami Nasri v. Allan Romme - SiteVision ApS/ Erik Smith - High Yield Solutions Inc.
Case No. D2015-0881
1. The Parties
The Complainant is Rami Nasri of Chatou, France, self-represented.
The Respondent is Allan Romme - SiteVision ApS of Taastrup, Denmark / Erik Smit - High Yield Solutions Inc of Eden Island, Seychelles, represented by Lando & Anastasi, LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names <binaryoptionrobot.biz>, <binaryoptionrobot.com> and <binaryoptionrobot.org> are registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 25, 2015. On May 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 29, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On May 30, 2015 the Complainant filed an amendment to the Complaint. The Center sent an email communication to the Complainant on June 1, 2015 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 June 5, 2015.
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").
On June 8, 2015 the Center received a communication from Respondent.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2015. On June 16, 2015 the Respondent sent an inquiry to the Center regarding the possibility of an extension. On June 23, 2015 the Respondent filed a request for extension. On June 24, 2015 the Center notified the parties that the deadline for the filing of a Response was extended until July 6, 2015. The Response was filed with the Center on July 2, 2015.
The Respondent filed a Supplemental filing on July 20, 2015. The Complainant made a supplemental filing on July 28, 2015.
The Center appointed James A. Barker, Robert A. Fashler and Alistair Payne as panelists in this matter on July 27, 2015. 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 the Rules, paragraph 7.
4. Factual Background
The Complainant offers a product named "Binary Option Robot" at the website "www.binary-option-robot.com". The main function of the Complainant's product is to automatize online binary option trading. The Panel understands that "binary option" trading is a particular type of trading in which the investor can get a fixed return or nothing – and is, in that sense, binary. The Complainant operates an affiliate program via its website at "www.affiliates.binary-option-robot.com".
The Respondent operates a similar business to the Complainant, including an affiliate program.
The disputed domain name <binaryoptionrobot.biz> was registered on April 2, 2014 and the disputed domain name <binaryoptionrobot.org> was registered on April 3, 2014. The disputed domain name <binaryoptionrobot.com> was registered on February 16, 2012 and was acquired by the Respondent in April, 2014. (For the reasons discussed further below, the Panel has treated the separately named Respondents together. As such, references to the singular Respondent in this case are to be read as references to all named Respondents.)
5. Parties' Contentions
The following is a summary of what appear to be the principal allegations and responses in the Complaint and the Response.
The Complainant alleges that the disputed domain names are identical and confusingly similar to its own domain name (<binary-option-robot.com>), and that the Respondent offers an identical product and a confusingly similar affiliate program. The Complainant says that it first used the name "Binary Option Robot" in October, 2013, as the name of the product hosted on its own website.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant bases this allegation on having registered its own domain name before the Respondent registered the disputed domain names. The Respondent Erik Smith was in a business relationship with the Complainant from April to October 2014, as one of the Complainant's affiliates. That Respondent is the owner of a website at "www.fairbinaryoptions.com" and of the company "Binary Options Malta Ltd". However, the Complainant gave the Respondent no permission to use the disputed domain names. The Complainant says that the Respondent has used the disputed domain names for commercial gain and to mislead and divert consumers to its website.
Lastly, the Complainant alleges that the disputed domain names were registered and have been used in bad faith. At one point, the Respondent denied owning one of the disputed domain names. The Complainant says that the content of the Respondent's websites duplicates content from the Complainant's website, and purports to contain functionality that it does not, but which is contained on the Complainant's website. The apparent similarities between the Complainant's and the Respondent's websites mean that there is consumer confusion. Therefore, according to the Complainant, the Respondent has intentionally attempted to attract consumers by that confusion, to profit from the popularity of the Complainant's product.
The Respondent denies the allegations made against it. The Respondent states that the correct Respondents are "High Yield Solutions, Inc.", which is the owner of the disputed domain names, and "to the extent necessary", "SiteVision ApS", which registers and maintains the disputed domain names for High Yield Solutions. The individuals named as Respondents are representatives for their respective companies and do not hold a personal interest in the disputed domain names.
The Respondent does not deny that the disputed domain names and the domain name owned by the Complainant are essentially identical. However, the Respondent disputes that the Complainant owns any trademark rights in <binary-option-robot.com> or "Binary Option Robot". In the alternative, the Complainant must show that those terms have become a distinctive identifier of its products or services, but it has not. The term "Binary Option Robot" is a generic or descriptive phrase and is not in any case capable of functioning as a mark.
The Respondent claims that it has a legitimate interest in the disputed domain names and that, as descriptive terms, they are legitimately subject to registration on a "first come, first serve" basis. Moreover the Respondent's use of the disputed domain names is a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
The Respondent denies that it has registered or used the disputed domain names in bad faith. It says that none of the four circumstances indicating bad faith, outlined in paragraph 4(b) of the Policy, are present. To prove bad faith it must be shown that the Respondent registered the disputed domain names with the Complainant's trademark in mind. The Respondent maintains that the Complainant has provided no evidence of such knowledge. It says that the Respondent did not acquire the disputed domain names to prevent the Complainant from reflecting its mark in a corresponding domain name. Neither, says the Respondent, were the disputed domain names registered for the purpose of disrupting the Complainant's business. The Respondent acquired the disputed domain name <binaryoptionrobot.com> from a previous owner who had been using it in connection with building a binary option robot for two years prior. The Respondent is not attempting to create confusion with the Complainant's business, as the content to which the Complainant objects is descriptive of how binary option robots operate.
The Respondent requests the Panel to make a finding of reverse domain name hijacking against the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below, immediately following a consideration of the differently named Respondents, and the supplemental filings by the Parties.
A. Differently named Respondents
The Complaint and Amended Complaint list differently named Respondents. In spite of this, the remainder of the Complaint is drafted as if the Respondent is a single entity, and the Complainant has made no request to consolidate the Complaint.
Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Second Edition ("WIPO Overview 2.0") refers to the criteria to be applied where multiple respondents are involved, and states that such a complaint would typically need to be accompanied by a request for consolidation. However, that paragraph of the WIPO Overview 2.0 appears directed to the circumstances where the respondents are, in fact, different entities.
The Respondent has indicated that the disputed domain names are, in effect, owned by High Yield Solutions, Inc, and that the individuals listed as registrants do not hold the disputed domain names in their personal capacity. There is no evidence before the Panel to the contrary. Accordingly, the Panel will treat the named Respondents as a single entity for the purpose of this proceeding.
B. Supplementary Filings
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable. As noted above, the Center received further submissions from both parties, which sought to put forward additional facts.
The filings were not requested by the Panel pursuant to paragraph 12 of the Rules. The objective of the Policy and the Rules is to ensure a speedy and inexpensive determination of the relevant issues. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to the Policy's objectives to invite or allow supplementary pleadings and evidence. Each party is given a single opportunity to present its case. There must be compelling reasons to invite further contributions.
The Respondent's supplemental submission merely sought to provide further facts about other legal (tax) proceedings which the Panel considers are not necessary for it to make a decision in this case. The Complainant's supplemental submission sought to rebut what it claimed were false statements in the Response, as well provide additional facts regarding recognition of its purported trademark rights.
C. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first issue which the Complainant must establish is that it "has rights" in a trademark. The Complainant provided no evidence of having registered trademark rights.
In the alternative, a complaint can proceed where the complainant can demonstrate unregistered trademark rights. What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview 2.0. The consensus of prior panels is relevantly set out under paragraph 1.7 ("What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?"):
"Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such 'secondary meaning' includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition [...]"
The Complainant provided very little evidence of this kind, and there is little else in the case file to indicate such evidence. Panels have historically been reluctant to make a finding of unregistered trademark rights unless it is clear on the evidence before the Panel that there has been considerable use made of the trademark at issue. The only evidence before the Panel in this regard is the Complainant's evidence concerning its date of first use and alleged seniority of its domain name <binary-option-robot.com> and of this name to describe its product. Even accepting the Complainant's Supplemental Filing which merely argue that the Complainant has a Facebook page with 315 "likes", that a Google Trend report shows increased use of "binary option robot" after 2013, and claims of 3,799 sales by the Complainant, there is clearly inadequate evidence to support a finding of unregistered trademark rights.
In addition, the disputed domain names include a descriptive element. The Complainant itself explained that its business is to automatize online binary option trading. The inclusion of descriptive terms suggests that the disputed domain names are less likely to be distinctively associated with the Complainant. In these circumstances it would be necessary for the Complainant to put forward very persuasive evidence of the extent and scope of its prior use of the trademark in order to successfully demonstrate unregistered trademark rights. Clearly, it has not done so in this case.
One other aspect of the evidence is suggestive that the term "binary option robot" does not have a distinctive association with the Complainant, and has been used by other parties. The disputed domain name <binaryoptionrobot.com> was originally registered by an unrelated third party on February 16, 2012, before the Respondent acquired it and registered the other disputed domain names. Hence, the Respondent did not originally register the disputed domain name <binaryoptionrobot.com>, but, rather, acquired it from the immediately preceding owner.
Accordingly, the Panel finds that the Complainant has not established that it relevantly has rights in a trademark under the first element of the Policy.
D. Rights or Legitimate Interests, Bad Faith
Because of the Panel's findings above, it is not necessary to address the other two elements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. In conclusion, the Panel notes that if the Complainant were to feel it had a cause of action (such as for "passing off") it would not be prevented from seeking redress in the courts.
E. Reverse domain name hijacking
The Respondent has sought a finding of reverse domain name hijacking against the Complainant. Under paragraph 1 of the Rules, "Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The Panel declines to make such a finding. The Respondent provided some evidence to suggest threatening conduct by the Complainant. On the other hand, the Complainant provided evidence that might on one view suggest sharp practice by the Respondent. This said, the factual circumstances of this case are complex and it is outside the scope of these proceedings for the Panel to comment further, except to say that it is possible that in bringing these proceedings the Complainant simply misunderstood the scope of its own rights. Overall it is therefore inappropriate for the Panel to make any finding as to reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Robert A. Fashler
Date: August 10, 2015