WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Topco Holdings, Inc. v. Amorn Mahittiburin
Case No. D2015-1760
1. The Parties
The Complainant is Topco Holdings, Inc. of Elk Grove Village, Illinois, United States of America, represented by Gozdecki, Del Giudice, Americus, Farkas & Brocato LLP, United States.
The Respondent is Amorn Mahittiburin of Bankok, Thailand, self-represented.
2. The Domain Name and Registrar
The disputed domain name <topcare.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 October 2, 2015. On October 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 Respondent submitted a series of emails to the Center on October 6, 7, 8, 9 and 20, 2015. The Complainant submitted an email on October 7, 2015.
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 October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. The Response was filed with the Center on November 18, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on November 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.
On November 26, 2015, the Complainant sent to the Center a request for permission to make a supplemental filing with regard to the Response for, inter alia, the following reason: "Respondent's response contains a number of factual assertions that could not be reasonably anticipated as of the date of filing of the Complaint".
Pursuant to the general powers of the Panel under paragraphs 10 and 12 of the UDRP Rules, the Panel issued an Administrative Procedural Order ("Panel Order No. 1") on November 30, 2015 granting the Complainant a 7 day period from the Center's notification of the Panel Order No. 1 to submit its Supplemental Filing addressing specifically the asserted factual assertions that could not be reasonably anticipated as of the date of filing of the Complaint and providing additional statements and supporting documents to address the bad faith issue at the time of registration. The Panel also invited the Respondent to submit thereafter any additional comments on the information supplied by the Complainant in response to the Panel Order No. 1 within 7 days from the expiry of the time given to the Complainant to submit its Supplemental filing.
On December 7, 2015, the Complainant sent its Supplemental Filing in response to the Panel Order No. 1 to the Center. On December 14, 2015, the Respondent sent its Supplemental Filing in regard to the Panel Order No. 1 to the Center.
4. Factual Background
The Complainant is a cooperative association of about 50 small and medium-sized independent regional supermarket chains operating in 35 States within the United States.
The Complainant is the owner of trademark registrations for TOP CARE, including the United States trademark registration Nos. 1436130 (word mark) on April 14, 1987, in International classes 3, 5, 10, 16 and 21; 1749802, registered on February 2, 1993, in International class 5, 1750009 (word mark), registered on February 2, 1993, in International class 10; 1846816 (word mark), registered on July 26, 1994, in International class 25; 2066247 (word mark), registered on June 3, 1997, in International classes 3, 5 and 10; 2031681 (figurative mark) 2031681, registered on January 21, 1997, in International classes 3, 5 and 10.
The Complainant is also the owner of trademark registrations for TOP CARE in combination with other terms, including the United States trademark registration Nos. 3618402 for TOP CARE SUPREME (word mark), registered on May 12, 2009, in International class 3; and 3758273 for TOP CARE BABY (word mark), registered on February 23, 2010, in International class 16.
The Complainant moreover owns the International trademark No. 963986 for TOP CARE (word mark), registered on October 24, 2007, in classes 3, 5, 10, 16, 21 and 25, designating China, Japan and the Republic of Korea; and 949396 for TOP CARE (figurative), registered on October 24, 2007, in classes 3, 5 and 10, designating China, Japan and the Republic of Korea.
The Complainant operates a web site under the domain name <topcarebrand.com>, registered on December 11, 2012.
The disputed domain name <topcare.com> was registered on January 14, 1998 and is pointed, at the time of the drafting of the decision, to a web page displaying pay-per-click links, including links related to healthcare products and services.
5. Parties' Contentions
The Complainant states that it began marketing health and beauty care items under the trademark TOP CARE in 1985 and that the line of TOP CARE products has expanded since then, with more than 45 members currently carrying the trademark TOP CARE, including nearly 1,300 products.
The Complainant contends that the disputed domain name is identical to its registered trademark TOP CARE and confusingly similar to its registered trademarks consisting in TOP CARE along with other terms.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name since:
- the Respondent is not known by the disputed domain name or any component part thereof;
- the Complainant has not authorized the Respondent to use the disputed domain name or the Complainant's marks in any manner;
- the Respondent does not own United States or International trademark registrations containing TOP CARE;
- the Complainant has located no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or other name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
- the web site currently hosted at "www.topcare.com" does not appear to be actively operated by the Respondent, as it is a web page provided by Sedo with links to home health care supplies and other health care related sites, none of which are affiliated with the Respondent;
- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the correspondent web site contains third-party links to "home healthcare supplies", a category of products which are misleadingly similar to the products procured and marketed under the Complainant's marks.
The Complainant submits that the Respondent registered and used the disputed domain name in bad faith for the following reasons:
- the Respondent does not actively conduct business under the disputed domain name;
- the Respondent has parked its web site with a parking service;
- the parking service used by the Respondent provides links to third-party sites advertising goods confusingly similar to those the Complainant markets under its trademarks;
- the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name, as the web site to which the disputed domain name resolves contains the caption "BUY THIS DOMAIN. The owner of topcare.com is offering it for sale for an asking price of 600000 USD". The Complainant further states that the Respondent caused the caption described in the preceding subparagraph to be added to the web site subsequent to the date of the last email communication between the Respondent and the Complainant's counsel;
- the Respondent has demonstrated a pattern of registering domain names under which it operates no web sites and conducts no activities, while looking only to sell such web sites, since, in pre-complaint correspondence, the Respondent mentioned to have sold a domain name not actively used for USD 14,000 and requested the amount of USD 500,000 for transferring the disputed domain name to the Complainant;
- the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 such party's web site or location or of a product or service on the web site or location.
The Respondent rebuts the Complainant's contentions asserting that:
- "top care" is a generic expression made of common words and phrases in the English language, as shown also by a search for "topcare" on Google , which shows a large number of companies named "topcare" or "top care";
- the disputed domain name has been hosted on the Sedo servers NS1.SEDOPARKING.COM and NS2.SEDOPARKING.COM since March 2013 and has been up for 32 months as of the filing date of the Response as a pay-per-click web site, causing the Respondent earn a commission;
- the Respondent operated the web site at the disputed domain name as a "business site" by logging and changing the layout on the pages every month;
- people know that the web site at the disputed domain name is a "one-stop-service" about healthcare products and services providing information about healthcare services by having random links to generic sites promoting a wide variety of general goods and services;
- a disclaimer on the Respondent's web site disclaims any relationship between the Respondent and Sedo and third parties;
- the Complainant has engaged in a Reverse Domain Name Hijacking since the Respondent registered the disputed domain name long time ago, on January 14, 1998, and the Complainant asserted infringement of its trademark rights only after the Complainant's negotiation for the acquisition of the disputed domain name failed;
- the Respondent has never been employed by the Complainant; thus, it had no need for any authorization to use the disputed domain name;
- the Respondent has never used the Complainant's marks in any manner;
- the Respondent sold only another domain name almost 2 decades ago;
- the Respondent never solicited the Complainant to buy the disputed domain name, as it was contacted by the Complainant which asked for a price and the Respondent simply answered, refusing the Complainant's offer of USD 5,000;
- the Respondent had no knowledge of the Complainant when it registered the disputed domain name and purchased it in light of the intrinsic value of a domain name constituted of common words and phrases.
C. Complainant's Supplemental Filing
The Complainant submits that the Respondent raised in its Response new purported facts, asserting that the Respondent's allegation that it has engaged in an active business by operating a web site with third-party links provided by a hosting service misconstrue the Respondent's actual activity on the web site to which the disputed domain name resolves. The Complainant highlights that having a domain name hosted by a parking service does not equate to engaging in a business and is not sufficient to claim to be known as a particular word or phrase. The Complainant also asserts that the Respondent should have submitted other documents to substantiate its claims, such as copies of governmental filings, third-party agreements and advertising materials.
In reply to the Panel's request to submit additional statements and documents to address the Respondent's bad faith at the time of registration, the Complainant only reiterated that bad faith can be inferred from the Respondent's failure to conduct even cursory due diligence to determine whether the disputed domain name may infringe on rights of others prior to registering the disputed domain name, and highlights that paragraph 2 of the Policy confers the responsibility on the registrant of a domain name to determine if it infringes someone else's rights. The Complainant also indicated that "Respondent concedes that he selected the Domain Name for its generic value, without having made a determination as to whether it infringed on the trademark rights of others" and that "this Panel should not ignore the clear inference as to the ramifications of Respondent's intentional ignorance".
D. Respondent's Supplemental Filing
The Respondent replies to the Complainant's Supplemental Filing stating that the business that it is doing with Sedo is legal, that there are no laws that the Respondent is breaking by providing links and getting paid and that the Respondent never misleads or tarnishes the trademark or diverts consumers due to the fact that "top care" is a common phrase in English.
The Respondent reiterates that the Complainant has known of the existence of the disputed domain name but did not act in a timely manner to complain that its business was affected from the Respondent's registration of the disputed domain name and that the Complainant has no rights to claim a domain name constituted of generic/common phrases or force the Respondent to sell the disputed domain name at its demand.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the mark TOP CARE by virtue of its United States and International trademark registrations for TOP CARE as outlined above.
The Panel further finds that the disputed domain name <topcare.com> is identical to the Complainant's trademark TOP CARE since it reproduces the mark in its entirety with the mere addition of the generic Top-Level Domain ".com", which can be disregarded, being a mere technical requirement of registration.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark TOP CARE in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
With respect to this requirement, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
According to the documents and statements submitted by the parties, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name.
In addition, there is no evidence that the Respondent, whose name is Amorn Mahittiburin and has redirected the disputed domain name to a mere pay-per-click landing page, might be commonly known by the disputed domain name.
With reference to the use of the disputed domain name in connection with a pay-per-click landing page, as stated in paragraph 2.6 of the WIPO Overview 2.0, "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' […] or from 'legitimate non-commercial or fair use' of the domain name, 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".
This Panel is inclined to find that the use of the disputed domain name in connection with a pay-per-click web site does not amount to a bona fide offering of goods or services or to a legitimate non-commercial of fair use of the disputed domain name. However, the Panel also notes that the links published on the Respondent's web site appear to relate to the generic meaning of the disputed domain name and do not refer to the Complainant's trademark.
Ultimately, it is not necessary for the Panel to make a finding under this section since the Complainant, as highlighted in the following paragraphs, has failed to succeed under the bad faith requirement.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has failed to demonstrate the Respondent's bad faith at the time of registration for the following reasons.
As highlighted in the paragraphs above, the Complainant is a cooperative association of about 50 small and medium-sized supermarket chains operating in the United States. The Complainant stated that it began procuring and marketing health and beauty care items under the TOP CARE brand in 1985 and is the owner of trademark registrations filed in the United States since 1987, while two additional International trademark registrations designating China, Japan and the Republic of Korea, were registered in 2007. In order to demonstrate actual use of its trademark TOP CARE, the Complainant submitted solely, as Annex 5 to the Complaint, photographs of TOP CARE branded products marketed by the Complainant. In addition, the Complainant's domain name used to promote the TOP CARE branded products, <topcarebrand.com>, was registered only on December 11, 2012.
The Panel notes that the Complainant has not provided evidence of ownership of any trademark registration for TOP CARE in Thailand, where the Respondent is based, before the registration date of the disputed domain name (January 14, 1998). Furthermore, even in reply to the Panel Order No. 1 which specifically requested the Complainant to provide additional documents to address the bad faith registration issue, the Complainant has not submitted any evidence of use of the trademark TOP CARE outside United States at any time.
In view of the above, and considering that, according to the elements available before this Panel, the Respondent appears not to be a professional domainer and "top care" to be a generic expression not exclusively referable to the Complainant, the Panel finds that the Complainant has failed to demonstrate that the Respondent was or ought to be aware of the Complainant's trademark and registered the disputed domain name to trade-off the Complainant's trademark rights.
As highlighted above, the Panel has also reviewed the screenshots of the Respondent's web site submitted by the Complainant and found that the links published on the web site at the disputed domain name refer mostly to healthcare and homecare products and services, which are related to the generic meaning of the disputed domain name, while no reference to the Complainant's trademark TOP CARE is made.
Also the Respondent's communications in the correspondence exchanged between the parties suggest to the Panel that the Respondent did not intend to target the Complainant.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered the disputed domain name in bad faith.
D. Reverse Domain Name Hijacking
According to paragraph 15(e) of the Rules, a panel is obliged to state in its decision that a complainant has brought the complaint in bad faith or was brought primarily to harass the domain name holder. "Reverse Domain Name Hijacking" is defined in the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
It is established that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that:
"Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations".
Although the Complainant has not succeeded in this proceeding, the Panel does not find that the circumstances of this case justify a finding of Reverse Domain Name Hijacking, since the Complainant owns prior trademark registrations for TOP CARE, the Respondent has no registration for this mark and is not using the mark TOP CARE on the web site at the disputed domain name to identify products or services legitimately marketed by the Respondent. See, along these lines, Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., WIPO Case No. D2009-1244. Moreover, the Panel finds that the Complainant had a basis for suspecting bad faith in view of the Respondent's use of the disputed domain name in connection with a pay-per-click site and of the Respondent's indication that it would be willing to sell the disputed domain name to the Complainant for a six figure consideration.
For the foregoing reasons, the Complaint is denied. The Panel also declines to make a finding of Reverse Domain Name Hijacking.
Date: December 29, 2015