WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UNIKS APP, S.L. v. Privacydotlink Customer 588010 / Blue Nova Inc.
Case No. D2016-0534
1. The Parties
The Complainant is UNIKS APP, S.L. of Barcelona, Spain, represented internally.
The Respondent is Privacydotlink Customer 588010 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Blue Nova Inc. of St. Michael, Barbados, represented by ESQwire.com, P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <uniks.com> is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2016. On March 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2016 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 March 28, 2016.
On April 1, 2016, the Center notified the Parties in both English and Spanish that the language of the Registration Agreement in this case was English. The Complainant filed a translation into English of the amended Complaint on April 4, 2016. The Respondent did not submit a language of the proceeding request. The Complainant filed an amendment to the amended Complaint on April 8, 2016 and a signed version of the translation into English of the amended Complaint on the same date.
The Center verified that the Complaint together with the amended Complaint, the translation into English of the amended Complaint, the amendment to the amended Complaint and the signed version of the translation into English of 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 in English and Spanish, and the proceedings commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. An automatic extension of the Response due date was granted until May 2, 2016 under paragraph 5(b) of the Rules. The Response was filed with the Center on May 1, 2016.
The Center appointed Nick J. Gardner, Alejandro Touriño and The Hon Neil Brown Q.C. as panelists in this matter on June 8, 2016. 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 is a company incorporated in Spain. It owns European Community Trademark No 014401939 in respect of the word UNIKS (in both word and stylized form) which was applied for on July 23, 2015 and granted on November 4, 2015. It applied on July 28, 2015 for a trademark in the US for the word UNIKS.
The Disputed Domain Name was originally registered on October 2, 2001. It was purchased by the Respondent in 2005. It has since then been used to resolve to a parking page containing sponsored links. None of these links concern the Complainant. It is also offered for sale by the Respondent.
The Respondent is a company based in the United Sates and is in the business of trading in domain names. It owns a portfolio of domain names.
The Complainant, acting through an individual and without revealing its identity sought to purchase the Disputed Domain Name from the Respondent in August 2015. An offer of USD 1500 was made. A reply indicated that the Respondent was seeking a sum "in the upper four figures+". Negotiations did not proceed any further.
5. Parties' Contentions
The Complainant has provided hardly any information about itself or its business. According to the amended Complaint, it "has developed a downloadable software application on mobile devices and the Complainant wants to use the mark UNIKS for this software […]". Having provided this factual background the Complainant then explains its case in the following way:
a) The Disputed Domain Name is identical to the UNIKS trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name as it does not use the Disputed Domain Name but merely offers it for sale.
c) The Respondent uses the Disputed Domain Name in bad faith as its only intention in registering the Disputed Domain Name was to offer it for sale to third parties, including third parties who had intellectual property rights in the term UNIKS, like the Complainant. In doing so the Respondent demands a high economic cost, far exceeding the costs it incurred in registering the Disputed Domain Name. In this regard the Complaint relies upon correspondence when it sought to purchase the Disputed Domain Name (see above).
The Respondent has produced a very detailed Response with accompanying documentary evidence, and set out numerous authorities in relation to its case. It is not necessary to repeat all that the Respondent has said here. The salient points the Respondent makes are as follows.
The Respondent says that it obtained the Disputed Domain Name (through its predecessor in interest) on or around June 27, 2005. It says it purchased the Disputed Domain Name because <uniks.com> is a valuable acronym and a brandable, short character domain name that it believed no party could claim exclusive rights in. It says it had no knowledge of the Complainant, or its business, at that time.
The Respondent says the Complainant's rights in the term UNIKS post-date the Respondent's registration by many years and that its registration of the Disputed Domain Name cannot be in bad faith. It also says its activities in offering the Disputed Domain Name for sale, and in the meantime linking it to a parking page, are entirely legitimate.
It says the Complaint is completely misconceived, and represents a "Plan B" by the Complainant after its "Plan A" - to buy the Disputed Domain Name - failed because it was not prepared to pay the price the Respondent was asking. It says that the Complainant's conduct amounts to Reverse Domain Name Hijacking and asks the Panel to rule accordingly.
The Respondent makes many more points in support of its arguments but it is not necessary to consider those further – where relevant they are addressed below.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with 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 Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it owns a registered trademark in respect of the term "uniks". The Panel holds that the Disputed Domain Name is identical to the UNIKS trademark. It is well established that where the specific top-level of a disputed domain name (in this case ".com") serves no purpose other than a purely technical one (contrast, for example, a domain name such as <osram.lighting>), it may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Respondent is of course correct in noting that the Complainant's trademark was applied for and registered long after the Disputed Domain Name was registered. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under paragraph 4(a)(i) of the UDRP - see WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.4 which states in response to the question "Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?" as follows:
"Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP."
The Panel agrees with this view. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In the present case the Respondent does not claim to have any rights in the term "uniks" except by having used that term for what it says is a bona fide parking page with sponsored links on it whilst at the same time offering the Disputed Domain Name for sale. The question of whether use of a domain name for a parking page itself establishes a legitimate interest is considered in WIPO Overview 2.0 of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0") at section 2.6:
"Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?
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" [see also paragraph 3.8 below] or from "legitimate noncommercial 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 (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."
In the present case the Panel finds that there is no capitalization upon the Complainant's trademark value and is therefore inclined to find that the Respondent has established a legitimate interest. However, in view of the Panel's finding on bad faith issues (see below) it is not necessary for the Panel to reach a conclusion on this issue.
C. Registered and Used in Bad Faith
The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered or used in bad faith. The Respondent says it had never heard of the Complainant or its use of the term "uniks" when it registered the Disputed Domain Name. Given the evidence before the Panel that account seems to the Panel to be entirely credible and the Panel sees no reason to doubt the Respondent's statement. The term "uniks" is not a recognizable word1 but the Panel sees no reason to doubt the Respondent's statement that it is a short and potentially useful domain name which was obtained by the Respondent as a potentially attractive name to add to the portfolio of names it held and offered for sale.
In reaching this conclusion the Panel notes that no case is advanced by the Complainant to suggest that it has had at any time any reputation (apart from its registered trademark) in the term "uniks" and no case is even advanced to suggest the Respondent in any way had the Complainant or its products or its trademark in mind when it obtained the Disputed Domain Name.
In this context paragraph 3.1 of WIPO Overview 2.0 states the following consensus view:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date […], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
The Panel concludes that is precisely the situation in the present case.
The Panel notes that the Complainant's case rests entirely on the fact that the Respondent offers the Disputed Domain Name for sale, and in the meantime links it to parking page containing sponsored links (none of which relate to the Complainant). Carrying on business in registering descriptive or generic domain names is not of itself objectionable – see for example X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519 for a case discussing this issue and the applicable principles. Offering domain names for sale is not of itself objectionable – see Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 for an example of a case where the relevant considerations were discussed in relation to this issue.
There may be circumstances where a registrant (or a purchaser) of a domain name which is a generic word or an acronym has knowledge of the rights of the trademark owner in a way which could raise issues as to the good faith or otherwise of the registrant. In order to establish the applicability of such circumstances it is incumbent upon a complainant to explain to a UDRP panel, with appropriate supporting evidence, why it is that a registrant should be considered to have actual knowledge of the complainant and/or the complainant's rights (or deemed knowledge if that is the complainant's case). In the present case no attempt whatsoever has been made in this regard. Somewhat extraordinarily the Complainant has not felt it necessary to place evidence before the Panel as to whether it has ever traded, whether it has a website, whether it has ever advertised or promoted whatever business it may have, whether it has even a single customer or whether it has ever earned any revenue. There is absolutely no case even advanced that the Respondent was (or should have been) aware of the Complainant's rights.
Taking into account all the above factors the Panel concludes that the registration and use of the Disputed Domain Name by the Respondent cannot be in bad faith. Accordingly the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
D. Reverse Domain Name Hijacking
The Respondent has submitted that the Complaint amounts to Reverse Domain Name Hijacking – which is defined as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name" - see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking ("RDNH"). Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Panel considers whether a finding of RDNH is appropriate depends upon whether or not the Complainant should have appreciated its case had no reasonable prospect of success. See WIPO Overview 2.0, paragraph 4.17.2 See also for example Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 where the panel noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.
The following matters arise in the present case:
a) The Disputed Domain Name was registered many years before the Complainant registered its trademark.
b) There is no evidence of the Complainant having traded under the term UNIKS or indeed even having traded at all.
c) The Complainant must have been aware that the Disputed Domain Name existed when it chose to register its UNIKS trademark. The Panel infers it also probably knew about the Disputed Domain Name when the Complainant chose its own name3.
d) There is no evidence (nor even any allegation) of the Respondent ever having done anything which targeted the Complainant or its trademark.
e) Readily available material on the Center's website and elsewhere makes clear that trading in domain names, and using domain names to link to a "parking page" are not themselves, on their own, activities which are objectionable. Further aggravating factors have to be present, none of which arise in the present case.
f) The Compliant sought to buy the Disputed Domain Name. In doing so it did not assert any rights in the term UNIKS, and indeed did not even identify itself as the potential purchaser4.
What appears to the Panel to have happened is that the Complainant identified the term UNIKS as a term it would like to use, both for its own name and for its software product. It then proceeded to adopt that name and apply for trademarks for the term, when it must have known the Disputed Domain Name was in existence and owned by a third party. It then sought to buy the Disputed Domain Name but was not prepared to pay the price the Respondent asked. At that point it could have readily chosen another domain name for its business, and if it wished could also have chosen a different name for itself and/or its software. It did none of these but instead filed the present Complaint. For the reasons set out in this decision the Complaint fails.
Taking into account all of the above the Panel has no hesitation in finding that the present case amounts to RDNH by the Complainant. The case is completely misconceived and without any merit at all. The Panel notes the Complaint is self-represented but does not consider this excuses the Complainant's conduct in filing this Complaint. There are only two possibilities. Either (1) the Complainant knew its case was without merit and filed it anyway, presumably hoping it would somehow fail to be considered fully by a Panel and hence result in a ruling in its favor; or (2) the Complainant has misunderstood the Policy and the Rules and failed to understand the problems with its case – but the Panel does not regard this as acceptable, as common sense should have alerted the Complainant to the fact that its case was not straightforward, and a review of the materials the Center makes available on its website would have enabled the Complainant to realize its Complaint could not succeed.
Whatever the reasons this is a Complaint which should never have been filed. The Respondent understandably fearing it could be deprived of a valuable asset if the case was not defended, chose to retain external counsel and file a response, no doubt at considerable cost. It has been wrongly put to the time, cost and trouble of defending the case. Furthermore (as often happens in such cases) the Respondent elected to have a three person Panel determine the case, which involves the incurring by the Respondent of still further cost. Beyond finding RDNH the Panel has no power to sanction the Complainant for this conduct, but the Panel deplores the fact that a baseless Complaint of this nature was filed. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
The Hon. Neil Brown Q.C.
Date: June 16, 2016
1 The Respondent says that the term "uniks" is recognized by the Google search algorithm as equivalent to the word "eunuch" but the Panel does not need to conclude whether that is correct.
2 "WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP."
3 the Panel cannot be certain of this as it does not know when the Complainant came into existence, as the Complainant has not even provided this information, but it seems likely it was subsequent to the registration of the Disputed Domain Name.
4 It is entirely understandable that a potential purchaser proceeds anonymously when its own name corresponds to the domain name in question and it has no prior rights in the name it seeks, no doubt fearing revealing its own name will increase the price asked. However proceeding in this way is not consistent with a having a bona fide claim to prior overriding rights in the name in question.