WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal Laser Systems, Inc. v. Whois Privacy Corp. / Agnieszka Dubicki
Case No. D2015-1992
1. The Parties
The Complainant is Universal Laser Systems, Inc. of Scottsdale, Arizona, United States of America ("United States"), represented by Thomas Horstemeyer, LLP, United States.
The Respondent is Whois Privacy Corp. of Nassau, Bahamas / Agnieszka Dubicki of Wroclaw, Poland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <versalaser.com> (the "Domain Name") is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2015. On November 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 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 November 11, 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. The Response was filed with the Center on November 18, 2015 and the Respondent confirmed that this was her complete Response on November 20, 2015.
The Center appointed David Taylor as the sole panelist in this matter on December 4, 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 an Arizona-based company that owns United States trade mark No. 3,109,673, for VERSALASER, registered on June 27, 2006 in connection with "laser systems for industrial, commercial, home and office use for use in the field of computer controlled material processing and used for material cutting, engraving, chemical and physical modification, imaging, 3D and 2D modelling and printing consisting of lasers, laser modulation controls, laser beam optics, motion control and support structure" and first used in commerce in 2003.
The Domain Name was originally registered to the Complainant on July 1, 2002, but it was allowed to lapse in 2014, and was subsequently acquired by the Respondent.
The Domain Name is pointing at the time of writing this decision to a Sedo parking page displaying sponsored links and offering the Domain Name for sale.
5. Parties' Contentions
The Complainant asserts that the Domain Name is confusingly similar to its trade mark for VERSALASER because it identically reproduces its trade mark and because the ".com" generic Top-Level Domain ("gTLD") should not be taken into account when comparing the Complainant's VERSALASER mark to the Domain Name.
The Complainant further asserts that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant states that the Respondent's use of the Domain Name does not constitute a bona fide offering of goods or services as the Respondent is not providing any goods or services on the website to which the Domain Name resolves. The Respondent further asserts that the Respondent's use of the Domain Name to prominently display a notice that read, "BUY THIS DOMAIN. The domain <versalaser.com> may be for sale by its owner!" (Emphasis in original) is classic cybersquatting, as there is no bona fide offer of goods or services at the current website for the Domain Name. The Complainant further asserts that there is no evidence that the Respondent is commonly known by the Domain Name or any name containing the term "versalaser".
The Complainant states that the Domain Name was registered and used in bad faith. The Complainant asserts that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trade mark or service mark (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. The Complainant stresses that no goods or services were or are provided on the website. Instead, the respondent only displays a notice that reads, "BUY THIS DOMAIN. The domain <versalaser.com> may be for sale by its owner!", with embedded links to a third party website. The Complainant relies on the decision Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, where the panel inferred bad faith registration from bad faith use, even where the Respondent's only use was an offer to sell the disputed domain name on a public Internet auction site.
The Complainant also asserts that the Domain Name was registered by the Respondent in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The Complainant explains that it had initially registered the Domain Name on July 1, 2002 and was using it to legitimately advertise and promote its laser system goods using its VERSALASER mark but that around July 2014 it inadvertently allowed the Domain Name to lapse, whereupon the Respondent subsequently acquired it. Finally, the Complainant asserts that by employing a privacy protection service, the Respondent was acting in bad faith in registering and using the Domain Name.
The Respondent asserts that the Complainant admitted in its Complaint that it abandoned its registration of the Domain Name and that she subsequently purchased it from the Registrar for its generic nature, as "'versa' is short for 'versatile' and 'laser'".
The Respondent further asserts that "there is no crime in offering for sale an asset I purchased" and opposes the remedy requested by the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 15 of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 10 of the Rules further provides that the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
The Panel shall therefore proceed to examine whether the Complainant has discharged the burden of proof in respect of each of the aforementioned three elements and decides as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has a registered trade mark for VERSALASER. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trade mark. The Panel notes that the Domain Name incorporates the Complainant's VERSALASER trade mark in its entirety. Prior panels deciding under the Policy have held that "when a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy." Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The gTLD suffix ".com" in a domain name is generally disregarded under the confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel therefore finds that the Domain Name is identical to the Complainant's trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that the respondent has no rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
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 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. See paragraph 2.1 of the WIPO Overview 2.0.
Based on the arguments and evidence put forward by the Parties, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that the Respondent has failed to rebut such a showing.
The Complainant has had trade mark rights for VERSALASER since 2003. The Complainant does not appear to have licensed or otherwise authorised the Respondent to use its trade mark and there is no evidence suggesting that the Respondent is commonly known by the Domain Name.
Furthermore, the Respondent's use of the Domain Name to resolve to a parking page containing sponsored links and offering the Domain Name for sale cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name. The Respondent argues that the Complainant abandoned the Domain Name and that she subsequently purchased it from the Registrar for its generic value ("versa" being short for "versatile" and "laser"). Whilst it is well established that a registrant can acquire and use a domain name for its generic or descriptive value, the Respondent's registration and use of the Domain Name is not consistent with her claim.
Firstly, whilst the term "laser" in the Domain Name may be descriptive or generic, its association with the term "versa" does not seem to have any other meaning except in relation to the Complainant. Indeed, a brief search on the Internet reveals that most if not all results obtained by entering the term "versalaser" on a search engine refer to the Complainant.
Furthermore, the sponsored links on the parking website associated with the Domain Name are targeting the Complainant's trade mark. It is well established under the Policy that pay-per-click ("PPC") parking pages built around a trade mark (as opposed to PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). See, for instance, Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598. See also paragraph 2.6 of the WIPO Overview 2.0.
The Respondent is therefore using the Domain Name to profit from the trade mark value attached to the Complainant's trade mark to misleadingly divert consumers to her website and such use cannot give rise to rights or legitimate interests in the Domain Name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate that the Domain Name was registered and used in bad faith, including but not limited to:
(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
As discussed above, the terms "versa" and "laser" together are distinctive of the Complainant's products and do not seem to have any other meaning except in relation to the Complainant. The Respondent has not denied knowledge of the Complainant's rights. Rather, her response focuses on the fact that the Complainant allowed the Domain Name to lapse and that she subsequently acquired it for its generic value. The Panel is of the view that the Respondent was likely aware or should have been aware, as would have been revealed by a brief search on an Internet search engine, of the Complainant's trade mark rights at the time of registration of the Domain Name.
There is very little information about the Respondent except that she stated that she acquired the Domain Name for its generic value and that she was intending to sell it. Whilst the practice of acquiring and selling domain names for profit is not in itself illegitimate, it is so when the domain name in question is identical or confusingly similar to a trade mark and there is evidence that it was acquired for its trade mark value as opposed to its generic value. The Panel is therefore of the view that the Respondent's offer to sell the Domain Name on the associated website constitutes evidence that the Respondent acquired the Domain Name primarily for the purpose of selling it to the Complainant or a competitor for valuable consideration in excess of the Respondent's documented out-of-pocket costs, in accordance with paragraph 4(b)(i) of the Policy.
The Respondent's use of the Domain Name to resolve to a parking page containing sponsored links targeting the Complainant's trade mark also constitutes bad faith use within the meaning of paragraph 4(b)(iv), as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. See Ustream.TV, Inc. v. Vertical Axis, Inc., supra. Whether the sponsored links are automatically generated or not is irrelevant, as it is well established under the Policy that a registrant is responsible for the content appearing on the website associated with the domain name, unless the registrant can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trade marks. See paragraph 3.8 of the WIPO Overview 2.0. The Respondent, however, has not submitted any such evidence and so the Respondent must be held accountable for the presence of such links.
The fact that the Complainant had inadvertently allowed the Domain Name to lapse does not eliminate the Respondent's bad faith, particularly given the distinctiveness of the Complainant's trade mark. Prior panels under the Policy have held that "The purpose of the Policy is to discourage cybersquatting, which is the use of domain names to take advantage of trademarks owned by other persons. The fact that the domain name with the same trademark had expired does not mean that the Respondent has any right to use a well-known trademark as its domain name when such use could cause confusion to consumers and damage to the owner of the trademark". See Donna Karan Studio v. Raymond Donn, WIPO Case No. D2001-0587.
Finally, the Panel also draws an adverse inference from the Respondent's use of a privacy protection service to conceal her identity. Whilst privacy shields may be legitimate in certain cases "it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting". See also Ustream.TV, Inc. v. Vertical Axis, Inc., supra.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith.
The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <versalaser.com> be transferred to the Complainant.
Date: December 15, 2015