WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pixers Ltd. v. Whois Privacy Corp.
Case No. D2015-1171
1. The Parties
The Complainant is Pixers Ltd. of London, United Kingdom of Great Britain and Northern Ireland (the "UK"), represented by Wojtyżak Michalska Adwokaci i Radcowie Prawni, Poland.
The Respondent is Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <pixers.com> (the "Disputed Domain Name") is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2015, 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.
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 July 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 20, 2015.
The Center appointed John Swinson as the sole panelist in this matter on August 25, 2015. 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
The Complainant is PIXERS Ltd, a UK-based company specializing in the online sale of wall murals, posters, wall stickers and other wall decorations. The Complainant sells these products globally through its online store, which is branded as PIXERS and located at <pixersize.com>.
The Complainant holds a Community Trade Mark for PIXERS (CTM No. 011 952 652), filed on July 3, 2013 and registered on December 23, 2013 (the "Trade Mark").
The Respondent is the privacy service "Whois Privacy Corp". The Respondent did not file a response to the Complaint.
The Disputed Domain Name was created on December 31, 2007. There is no active website associated with the Disputed Domain Name.
5. Parties' Contentions
The Complainant's contentions are as follows.
A. 1 Identical or Confusingly Similar
The Complainant has provided evidence of the registration of the Trade Mark. The Complainant claims the word "pixers" is a fancy name invented by its founders specifically for the purposes of the Complainant's business activity. The Complainant submits the term "pixers" is not a generic name.
A. 2 Rights or Legitimate Interests
The Complainant submits that the Respondent, to the best of the Complainant's knowledge, has no rights to use the Disputed Domain Name.
A. 3 Registration and Use in Bad Faith
The Complainant points out there is no active website currently associated with the Disputed Domain Name.
The Complainant also submits that the Respondent's failure to respond to the Complainant's letters and the use of a privacy service demonstrates bad faith.
The Complainant argues that the Disputed Domain Name is crucial for the Complainant's business activity, and for the Complainant to prevent any future breaches of its copyrights, including by competing businesses.
The Complainant submits the name "pixers" is exclusively associated with the Complainant's business and that the Complainant has been well known under this name for a number of years.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
A respondent's failure to file a response does not automatically result in a decision in favor of the complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan/PrivacyProtect.org, WIPO Case No. D2013-2059). However, a panel may draw appropriate inferences from a respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and no additional words have been added. It is well established that the ".com" addition is not sufficient to separate the domain name from the trade mark under the Policy.
The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.
Since it is difficult to prove a negative (i.e., that the Respondent lacks any rights or legitimate interests in the mark), particularly where the Respondent, rather than the Complainant, is best placed to have specific knowledge of such rights or interests, and since Paragraph 4(c) of the Policy describes how a Respondent can demonstrate rights and legitimate interests, it is generally accepted that a Complainant's burden of proof on this element is light (e.g., De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005 <deagostini.tv> and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
Therefore, once the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name, if the Respondent fails to submit a Response, the Complainant will generally have satisfied Paragraph 4 (a) ii of the Policy (See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Complainant has made a prima facie case.
This is because, although the Complainant's submissions on this element are scant, the Complainant has generally brought forward, and the Panel has reasonably been able to ascertain, the following, non-disputed, circumstances:
- The Complainant has not authorized or licensed the Respondent to use the Trade Mark.
- It can be assumed that the Trade Mark is known, as the Complainant has been operating for several years, and the Panel has observed that an Internet search for the Trade Mark produced hundreds of thousands of hits, of which at least the first two pages of results relate to the Complainant's business exclusively.
- There is no indication that the Respondent is commonly known by the Disputed Domain Name.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name does not currently (and apparently did not previously) resolve to any active website.
The Respondent has had the opportunity to demonstrate rights or legitimate interests, but did not do so; thus, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Subparagraph 4(b) of the Policy states that any of the following circumstances in particular (but without limitation) shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
In assessing these criteria, the Panel notes that there is no apparent active use of the Disputed Domain Name, e.g., to point to a website, or otherwise. It is accepted, as submitted by the Complainant, that the passive holding of a domain name can indicate use in bad faith,as can a respondent's concealment of identity and/or failure to reply to a complaint (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924). However, the Complainant's brief arguments do not support an inference that the Respondent must have registered the Disputed Domain Name in an effort to exploit the Trade Mark or are otherwise indicative of bad faith.
The available record indicates that the Disputed Domain Name was initially created in December 2007. The Registrar indicated in its verification response that the domain was transferred into its management in November 2010, and that no owner updates have been performed since this time. It is not clear from the record however, whether the Disputed Domain Name was first registered to the Respondent in December 2007 (or at another date before November 2010) and merely moved to the current Registrar in November 2010, or whether it was acquired by the Respondent only in November 2010.
The Complainant acquired registered rights in the Trade Mark in December 2013. The Complainant may have acquired unregistered rights in the Trade Mark sometime before that date, as a result of trading for example. In this regard, the Complaint only states the Complainant has been well known under this name "for several years". The Panel itself observed that the "About Us" section of the Complainant's website states: "Wall decoration is our passion and we have been sharing it with hundreds of thousands of satisfied customers since 2009" and that the Complainant's current domain name <pixersize.com> appears to have been created in 2011.
The Complainant's potential earlier trade mark rights underscore the relevance of the date of the Respondent's acquisition of the Disputed Domain Name. In circumstances such as here, where the earliest date at which the Complainant may have commenced using the Trade Mark is 2009 and the Respondent may have registered the Disputed Domain Name thereafter, the Complainant could be expected to provide sufficient arguments and evidence with respect to the Respondent's bad faith registration. It may also be the case that the Respondent registered the Disputed Domain Name prior to the Complainant's first use of the Trade Mark. The record in this case is simply not clear.
Even so, there is a question whether it is appropriate to hold the present lack of clarity against the Complainant, where the Respondent was in a clear position to shed light on this issue by providing a Response indicating and documenting the date on which it acquired the Disputed Domain Name. However, in the specific circumstances of this case, the Panel on balance declines to draw an adverse inference in this regard from the Respondent's default. On the whole, noting the Complainant's overall responsibility to properly present its case, the Panel finds this Complaint too scant to tip the scales in the Complainant's favor on this point.
Similarly, the Panel notes that the invoked Telstra decision is not authority for the proposition that passive holding of a domain name will always be proof that the third element of the Policy is satisfied. In Telstra, the fact of clear bad faith registration, along with other factors (the complainant's strong reputation, the respondent's failure to respond/provide evidence of its intentions, the respondent concealing its identity, and the respondent using false contact details), satisfied the panel that bad faith use was demonstrated under UDRP paragraph 4(b) when viewed holistically and in line with the purposes of the Policy and the (already then) dynamic nature of the Domain Name System and of cybersquatting behavior.
In Telstra, it is worth remembering that the panelist in that case had found bad faith registration, and was then considering whether passive holding could amount to bad faith use:
"The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith." (emphasis added).
The Complainant argues that the Respondent's holding of the Disputed Domain Name may mislead consumers seeking the Complainant online. Indeed, panels have taken the view that the requirement that the domain name "has been registered and is being used in bad faith" can, in certain specific circumstances, be satisfied by application of UDRP paragraph 4(b)(iv).
Paragraph 4(b)(iv) states that using a domain name in the way specified in that paragraph is "evidence" of both bad faith registration and bad faith use of the domain name. In some circumstances, that evidence can be rebutted, for example, if it can be clearly demonstrated by the Respondent that the registration was not made in bad faith. See Xbridge Limited v. Marchex Sales, Inc., WIPO Case No. D2010-2069 and the cases cited therein. These decisions show that paragraphs 4(a)(iii) and 4(b)(iv) cannot be read in isolation – bad faith must be considered in light of paragraph 4(a)(ii) and, as demonstrated by Telstra, with consideration of the purposes of the Policy and the dynamic nature of the Domain Name System and of cybersquatting behavior.
In short, paragraph 4(b)(iv) provides an evidentiary presumption of bad faith registration where there is evidence of a certain kind of bad faith use. In many cases, it may be difficult for the Respondent to rebut this evidentiary presumption.
Such cases are generally typified by a clear absence of rights or legitimate interests. By way of examples, other relevant factors could include the nature of the domain name itself, the content of any website to which the domain name pointed – including any changes in such website content and the timing thereof, the registrant's prior conduct generally and in UDRP cases in particular, the reputation of the complainant's mark, the use of (fraudulent) contact details or a privacy shield to hide the registrant's identity, the failure to submit a response, the plausibility of any response, or other indicia that generally cast doubt on the registrant's bona fides.
In certain circumstances, paragraph 4(b)(iv) may assist a complainant where it is unclear why a domain name was registered, it is passively held, and then opportunistically used to attract Internet users by creating a likelihood of confusion with the complainant's trademark. But that is not the situation here.
In the words of the panel in Telstra "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith".
In the end, after taking into account all of these considerations, in circumstances where it is unclear when the Respondent registered the Disputed Domain Name and where the Disputed Domain Name has not been used, the Panel finds the case insufficiently pleaded to warrant a transfer of the Disputed Domain Name.
For the foregoing reasons, the Complaint is denied.
Date: September 8, 2015