WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s r.o.
Case No. D2015-1512
1. The Parties
The Complainant is Delta-Sonic Carwash Systems, Inc. of Buffalo, New York, United States of America ("US"), represented by Simpson & Simpson PLLC, US.
The Respondent is Radio plus, spol.s r.o. of Praha, Czech Republic, internally represented.
2. The Domain Name and Registrar
The disputed domain name <deltasonic.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 Registrar informed the Center that the language of the registration agreement was Czech.
On September 1, 2015 the Center notified the parties that the Complaint had been submitted in a language that differed from the language of the registration agreement. The parties did not respond.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2015. The Response was filed with the Center on September 29, 2015.
The Center appointed Adam Taylor, Steven Fox and The Hon Neil Brown Q.C. as panelists in this matter on November 11, 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.
On November 13, 2015, the Panel issued Procedural Order No. 1 requesting that the parties produce certain correspondence which had been referred to in the Complaint but which was not exhibited. The Panel also extended the decision date to November 26, 2015. The parties duly produced the requested correspondence.
4. Factual Background
The Complainant, which is incorporated in the US, has used the DELTA SONIC mark in association with car wash and related services since 1967.
The Complainant's own website is located at "www.deltasoniccarwash.com". This domain name was registered in 1999.
The Complainant owns US trade mark no. 3864567 for DELTA SONIC filed April 1, 2010, in international class 37.
The disputed domain name was registered on September 4, 2011.
At an unspecified date thereafter, the disputed domain name was used for a parking page dominated by car wash-related links including the following subject categories: "Car Wash Coupons", "Delta Sonic Car Wash Systems" and "Car Wash and Oil Change". The disputed domain name was also listed for sale on GoDaddy at a price of USD 24,999.
On around February 4, 2015, the Complainant approached the Respondent via GoDaddy's domain brokerage service and offered to buy the disputed domain name for USD 10,000. The Respondent declined this offer.
On March 28, 2015, the GoDaddy broker informed the Respondent that the potential seller had stated that it held the trade mark for "Delta Sonic". The email included a link to the Complainant's trade mark.
On March 31, 2015, the broker informed the Complainant that the Respondent was willing to move from its asking price and asked the Complainant to revert with a maximum offer.
On April 15, 2015, GoDaddy told the Complainant that the seller would drop to USD 10,000, the amount of the Complainant's original offer. On the same day, the broker emailed the Respondent to say that he had spoken to the Complainant who "said that their in-house attorney is advising them to file a cease desist and then to file a UDRP, since they have a TM on it that pre-dates your ownership. Their best and final offer is USD 2k to drop the legal route."
On April 21, 2015, the Respondent applied for Czech trade marks for DELTASONIC (no. 348716) and DELTASONIC.COM (no. 348717), each in classes 9, 11 and 38.
On May 13, 2015, the Complainant offered USD 4,000.
On May 14, 2015, GoDaddy relayed to the Complainant the following communication from the Respondent:
"They might win UDRP (although I am good at replies nonetheless), but I will sue them in jurisdiction of Czech republic (which will stop the transfer - did their "counsel" told them this?) and they can expect it will take years and they might even lose.
And anyway, they can not expect to get hand on the domain for years, and it will cost them tens of thousands dollars, while my lawyers works on mothly (sic) fixed pay anyway...so it will cost me nothing...
Yeah and I changed the price to $15K, so please tell them exactly this They will see..."
On May 15, 2015, the broker told the Respondent that the Complainant would make a final compromise offer of USD 6,000. The Respondent informed the broker that he rejected this and counter-offered USD 8,888.
On August 27, 2015, two days after the Complaint was filed, the Respondent emailed the Complainant directly offering: ["Last call - $9,999"].
5. Parties' Contentions
The following is a summary of the Complainant's contentions.
The disputed domain name is identical to the Complainant's trade mark, which pre-dates the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent appears to be an electronic supplies distributor. The Respondent does not sell any products that bear the DELTA SONIC trade mark and it has not been commonly known by that name.
The Respondent has not used the disputed domain name for a bona fide offering of goods or services. Instead, it has used the disputed domain name for a parking page with sponsored links relating to the Complainant's services, thereby confusing consumers seeking the Complainant. On occasion the disputed domain name completely redirects visitors to other websites including for automotive glass repair.
The disputed domain name was registered more than 44 years after the Complainant started using its mark. The Complainant has used its mark extensively in advertising, including on its website, for many years before registration of the disputed domain name. Even a cursory search would have brought the Complainant to the Respondent's attention as the Complainant is at the top of Google for searches against "delta sonic".
Accordingly the Respondent should have been aware that the Complainant has substantial trade mark rights in its mark.
The Complainant attempted to purchase the disputed domain name through GoDaddy's brokerage service. The disputed domain name was initially listed for USD 24,999. The Complainant contacted GoDaddy, informed it of its trade mark rights and inquired as to the seller's lowest sale price. The Complainant then received an email indicating that the seller would be willing to sell the disputed domain name for USD 10,000 and that this offer was available for 48 hours. The Complainant declined and counter-offered USD 4,000, which the Respondent rejected. The Complainant then informed GoDaddy that it would be asserting its trade mark rights in a UDRP proceeding, following which the Respondent sent its May 14, 2015 email.
The Respondent's exorbitant listing price for the disputed domain name, its unwillingness to negotiate to a more reasonable amount and its promise to stymie any lawful attempts by the Complainant to recover the disputed domain name suggests that the Respondent had no intention of using the disputed domain name for a bona fide offering but, rather, for the primary purpose of sale to the Complainant in accordance with paragraph 4(b)(i) of the Policy. This is supported by the Respondent's listing of the disputed domain name on a domain brokerage service.
The Respondent's ownership of the disputed domain name also constitutes passive holding in bad faith.
The following is a summary of the Respondent's contentions.
The Complainant does not have a registered trade mark in the Czech Republic or in any other European Union ("EU") country, whereas other companies do, including Delta Zofingen AG. Another company using a "Deltasonic" brand is Sony, which formerly owned the disputed domain name.
The Complainant is unknown in the EU and probably in the US also.
The Complainant's entry was deleted from Wikipedia because it was a "non-notable company".
The Respondent filed its own trade marks in the Czech Republic in April 2015 and these have now been registered.
The Respondent is in the business of registering domain names and now owns many valuable domain names, mostly generic ones like the disputed domain name and including many domain names that future businesses may wish to use.
The Respondent has a legitimate interest in owning domain names which are generic, descriptive or nice-sounding acronyms – for future use. The Respondent is willing to sell or swap domain names in which others show interest. This is also legitimate.
The Respondent also legitimately "rents" out domain names which the Respondent is not itself using. The Respondent has "rented" the disputed domain name to a "domain traffic accelerator". Such revenue covers the renewal fees for the Respondent's domain names as well as some surplus which the Respondent uses to buy more domain names.
The Respondent acquired the disputed domain name in January 2012 for USD 9,000 from a "domain peddler". The Respondent earns about USD 125 per month by "renting it out".
The price of USD 10,000 quoted to the Complainant was very low.
It was the Complainant who blackmailed the Respondent, not the other way round, because it threatened the Respondent with this proceeding while trying to obtain the domain name for only USD 2,000.
The Respondent did not acquire the disputed domain name in bad faith. The Respondent was not aware of the Complainant when it registered the disputed domain name or for some years thereafter. The Complainant came to the Respondent's attention only when it approached the Respondent to buy the disputed domain name.
The Complainant's site indicates that it has a few outlets in a few states. Most Americans have probably not heard of it. The Complainant is not famous.
The Complainant is abusing the UDRP by attempting to upgrade to a better domain name for free.
The Complainant never contacted the Respondent to assert that its use conflicted with the Complainant's brand name.
6. Discussion and Findings
A. Language of the Proceeding
The Complainant has been submitted in English.
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complaint stated that the language of the registration agreement was English but the Registrar later advised the Center that in fact the applicable registration agreement was in Czech. As mentioned above, the Center informed the parties of this fact but neither replied.
Given that the Response was filed in English, with no reference to the language issue, the Panel considers that the parties have effectively agreed that English is the language of the proceeding for the purposes of paragraph 11(a) of the Rules. At the very least, the Respondent has not objected to English. The Panel has therefore determined that English should be the language of this proceeding.
B. Identical or Confusingly Similar
The Complainant has rights in the mark DELTA SONIC by virtue of its continuous use of the mark in US interstate commerce since 1967 and the US trade mark registration for that term in connection with the goods and services detailed therein. Disregarding the domain name suffix, this mark is identical to the disputed domain name.
The Respondent relies on the fact that the Complainant does not own a trade mark in the Czech Republic or the EU. However, the location of the Complainant's trade mark is irrelevant for the purposes of this element of the UDRP – see paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page. Such use of the disputed domain name could not of itself confer rights or legitimate interests in this case. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
Here, the advertising links on the parking page are dominated by references to car wash-related goods and services and are therefore clearly based on trade mark value.
The Respondent relies on its Czech trade marks for DELTASONIC and DELTASONIC.COM. However, as explained in paragraph 2.7 of WIPO Overview 2.0, a respondent's registration of a trade mark corresponding to the disputed domain name will not suffice to establish rights or legitimate interests if the overall circumstances demonstrate it was obtained primarily to circumvent the application of the UDRP. See, e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, where the panel stated
"To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy…
Under the circumstances, some might view Respondent's Tunisian registration itself as evidence of bad faith because it appears to be a pretense to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case."
The Panel believes that the Respondent's trade marks were indeed applied for in bad faith in light of the chronology of events outlined in section 4 above. In particular, the Respondent's applications were made in the midst of heated negotiations between the parties for sale of the disputed domain name and some six days after the broker informed the Respondent that the Complainant had been advised to file a "cease and desist", and then a UDRP, on the basis of a trade mark "that pre-dates your ownership".
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Respondent denies knowledge of the Complainant at the time of registration of the disputed domain name and points out that the Complainant has not established any particular degree of fame in its mark as of that time. It is true that the Complainant has produced no evidence in support of the alleged advertising of its mark prior to registration of the disputed domain name.
The Respondent also asserts, albeit without any supporting evidence, that others own registered trade marks for "Deltasonic" within the EU or are otherwise trading under that name.
However, the Respondent faces the difficulty that, on its watch, there was a parking page at the disputed domain name dominated by car wash-related links, which are explicable only by reference to the Complainant's trade mark. Not only that, but one of the links was to "Delta Sonic Car Wash Systems" which is materially the same as the trading name used by the Complainant: "Delta Sonic Car Wash". So the Respondent is virtually saying: "I know you are looking for Delta Sonic Car Wash and so, if you click on this link, it will take you right there." But this is deceptive because the link will not take users to the Complainant's website but, instead, it diverts users to the Complainant's competitors.
The Panel considers that the nature of the links on the parking page creates at least an inference that the Respondent was aware of the Complainant at the time of registration of the disputed domain name.
Furthermore, paragraph 3.8 of WIPO Overview 2.0 makes clear that a domain name registrant will normally be deemed responsible for content appearing on a website at the disputed domain name, even if such registrant may not be exercising direct control over such content - including advertising links appearing on an automatically generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third party trade marks.
In its Response, the Respondent simply seeks to evade responsibility for the parking page by characterizing the arrangement as "renting out" the domain name to a "domain traffic accelerator", with no further explanation or justification aside from claiming that such activity was "legitimate". However, the Respondent needed to go much further than this if it wished to successfully dissociate itself from the automated advertising links. The Respondent has provided no reason for the Panel to distinguish between the nature of the advertising links and the likelihood of the Respondent's knowledge of the Complainant's trade mark at the time of registration of the disputed domain name. Nor has the Respondent provided any evidence of a good faith attempt toward preventing inclusion of advertising or links which profit from trading on third party trade marks.
The Panel therefore concludes that, by using the disputed domain name comprising the Complainant's trade mark in connection with a parking page with links referable to the Complainant's mark as well as to goods and services relating to the Complainant's industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark. In accordance with 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
Furthermore, as explained in section 6C above, the Panel has concluded that the Respondent applied for its own trade marks in bad faith to circumvent the UDRP. The Panel considers that this fact is also evidence of bad faith as regards the disputed domain name as it adds to the likelihood that registration of the disputed domain name was similarly for an illicit purpose vis-à-vis the Complainant.
For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
Finally, as a postscript, the Panel wishes to express concern that the Complainant presented what is at best a highly selective account of the domain name purchase negotiations between the parties, while at the same time failing to exhibit the relevant correspondence – which only came to the Panel's attention in response to the Panel's Procedural Order No. 1. In particular, the Complainant claimed that the Respondent dropped its price from USD 24,999 to USD 10,000 in response to the Complainant's assertion of its trade mark rights, which offer the Complainant declined – without disclosing that the Complainant had itself previously offered to pay USD 10,000 for the disputed domain name, and so the Respondent was effectively endeavouring to accept the Complainant's previous offer. While the fine details of the negotiation are for the most part immaterial to this decision, nonetheless the Complainant should have given an accurate and clear picture of relevant events. And, if it wished to rely on the details of pre-action correspondence, the Complainant should have exhibited a full set of such correspondence.
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 <deltasonic.com> be transferred to the Complainant.
The Hon Neil Brown Q.C.
Date: November 25, 2015