WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EKR Systems Limited v. Steven Pascale

Case No. D2016-1304

1. The Parties

The Complainant is EKR Systems Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Morton & Associates, United States of America (“United States”).

The Respondent is Steven Pascale of Costa Mesa, California, United States.

2. The Domain Name and Registrar

The disputed domain name <mclip.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 June 27, 2016. On June 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 of the Respondent.

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 July 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2016.

The Center appointed Luca Barbero as the sole panelist in this matter on August 10, 2016. 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 August 18, 2016, the Complainant submitted its first Supplemental Filing.

On August 22, 2016, the Panel issued an Administrative Panel Procedural Order (“Panel Order No. 1”) requesting the Complainant to clarify few statements included in the Complaint and provide also additional evidence to substantiate its claims that the Respondent registered and is using the disputed domain name in bad faith. The Complainant was invited to submit its comments by August 31, 2016 and the Respondent was invited to submit its comments on the information supplied by the Complainant in response to the Panel Order by September 5, 2016.

The Complainant submitted its second Supplemental Filing, in response to the Panel Order No. 1, on August 30, 2016, while the Respondent did not submit any comments.

4. Factual Background

The Complainant is the owner of the United States Trademark Registration No. 3,819,469 for the standard character mark MCLIP, filed on April 20, 2009 and registered on July 13, 2010, for goods in International class 9, namely “software designed to import, format and clip video streams from video camera device onto computer hard drive.”

The disputed domain name <mclip.com> was registered on March 13, 2009 and is pointed to a not active web site.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s trademark MCLIP in spelling, sound and overall commercial impression.

The Complainant also states that the Respondent has no rights or legitimate interests in respect to the disputed domain name because:

- There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and/or services, since the disputed domain name has been pointed to a parking page informing them that the web site is unavailable with no indication as to the type of content that has been hosted on the web site, or will be available in the foreseeable future;

- There is no evidence of the Respondent, presently or at any point in time, using the disputed domain name under any legitimate noncommercial basis or fair use basis;

- The Respondent is not a licensee, nor in any way authorized to use the trademark MCLIP, or any variation of it. In addition, the Complainant has no affiliation with the Respondent.

The Complainant further alleges that the lack of legitimate interest is compounded by the fact that the disputed domain name is currently offline and evidence is lacking that the Respondent intends to use it in connection with any goods and/or services, and the actions of the Respondent in regards to the disputed domain name amount to nothing more than cybersquatting.

The Complainant submits that the Respondent has registered and continues to use the disputed domain name in bad faith because:

- Upon information and belief, the disputed domain name was transferred to the Respondent on or about April 3, 2014, well after the registration date of the Complainant’s trademark MCLIP, and it is established that when assessing bad faith registrations, one normally needs only trace the registration back to the most recent transfer of the domain name;

- The Respondent had prior knowledge of the trademark MCLIP and its accumulated goodwill due to the trademark’s extensive advertising and commercial use across the global marketplace;

- The Respondent illegitimately sought to capitalize on the goodwill of the trademark, acquired through years of commercial use, by purchasing a domain name that was identical to the Complainant’s trademark;

- The disputed domain name is not used in connection with an active web site and there is no bona fide intent to use the disputed domain name in connection with goods and services;

- There is no conceivable basis, other than bad faith, for the Respondent to register a domain that is identical to the Complainant’s trademark;

- It was the Respondent’s intention to either (i) sell the disputed domain name to the Complainant or its competitors (ii) disrupt the Complainant’s business by confusing potential consumers, and/or (iii) to default the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

C. Complainant’s first Supplemental Filing

The Complainant informs the Panel that, on July 19, 2016, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Acceptance Acknowledgement (“Notice of Acceptance”) for the Complainant’s registration of the trademark MCLIP on which the Complainant relies. Therefore, the Complainant notes that the Complainant’s registration has been deemed incontestable, pursuant to Section 15 of the Lanham Act, on July 19, 2016.

The Complainant also states that the issuance of the Notice of Acceptance signifies the USPTO’s acceptance of the Complainant’s Section 8 Declaration of Use, that illustrates the trademark MCLIP continuously being used in commerce, at the domain name <mclip-software.com>.

The Complainant also submits an envelope mailed to the Respondent, at the registrant address listed on the Registrar’s WhoIs database, which contained a courtesy paper-copy of the Complaint and was returned to the Complainant with the indication “Moved. Left no address”. The Complainant therefore states that the Respondent’s failure to provide accurate contact details to the Registrar is an additional evidence of bad faith.

D. Complainant’s second Supplemental Filing

In reply to the Panel Order No. 1, the Complainant has submitted a screenshot of the historical WhoIs records of the disputed domain name provided by the DomainIQ domain name research tool and stated that, while the Respondent became the named registrant of the disputed domain name on April 3, 2014, on November 14, 2010 the registrant of the disputed domain name was “Advertising Track”, but the registrant’s email address was the same as the one of the Respondent.

Therefore, the Complainant concludes that the transfer date of the disputed domain name to the Respondent was November 14, 2010, rather than April 3, 2014, as indicated in the Complaint.

The Complainant contends that the transfer of the disputed domain name to the Respondent anyway occurred after the Complainant obtained its USPTO Registration for MCLIP on July 13, 2010.

It also underlines that, while the registration certificate lists Bigfoot Ventures Ltd as the original owner the Complainant’s trademark MCLIP, Bigfoot Ventures Ltd and the Complainant are direct affiliates and there has been unity of ownership in the trademark MCLIP since its registration date.

The Complainant also states that it filed an intent to use application for the trademark MCLIP with the USPTO on April 20, 2009, accorded Serial No. 77/717,808, and began using the trademark in commerce in connection with video editing software on April 1, 2010. The Complainant also claims that its trademark MCLIP has been continuously and uninterruptedly used in commerce since April 1, 2010 and that its software MCLIP is available for download, with a 30-day free trial, at the Complainant’s current web site, “www.mclip-software.com”.

As additional elements to demonstrate the Respondent’s bad faith, the Complainant contends that:

- The Respondent first appears as the registrant for the disputed domain name on November 14, 2010, more than 7 months after the Complainant began using its trademark MCLIP in commerce and more than 4 months after the Complainant obtained its trademark registration for MCLIP;

- At the very least, constructive notice of the Complainant’s trademark MCLIP must be imputed as the Respondent should have known or been able to ascertain that the Complainant owned rights in the trademark, being located in the United States;

- According to the DomainIQ records, the Respondent is the owner of 43 active domains, with an estimated portfolio value of over USD 10,000. Therefore, it is submitted that the Respondent should be considered a sophisticated domainer and be held to a higher standard than a novice user owning only one or a handful of domains;

- The Respondent registered and is using the disputed domain name in bad faith because the Respondent has not made any use of the disputed domain name, has no rights or legitimate interests in the disputed domain name, had at least constructive knowledge of the Complainant’s registration, the trademark MCLIP is unique and distinctive, and because the Respondent has provided false contact information.

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 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 service mark 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. Preliminary procedural issue: Complainant’s Supplemental Filings

According to the consensus view of the UDRP panels as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is in the panel’s discretion whether to accept supplemental filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.

The Complainant submitted a Supplemental Filing, after the Panel appointment, indicating inter alia that a Notice of Acceptance was issued by the USPTO after the filing of the Complaint in connection with the registered trademark on which the Complainant relies, and that a courtesy copy of the Complaint sent to the Respondent had returned to the Complainant since the Respondent’s address published in the WhoIs records resulted incorrect.

Since the Complainant could not have been aware of the above-mentioned circumstances at the time of the filing of the Complaint, the Panel has decided to admit the above allegations contained in the Complainant’s Supplemental Filing (see section 5C above).

The Panel also decided to issue the Panel Order No. 1 to request that the Complainant provide additional evidence to substantiate its claims that the Respondent registered and is using the disputed domain name in bad faith. In particular, the Complainant was requested to provide additional comments, explanations and documents to substantiate the following statements in the Complaint: “Upon information and belief, the Domain Name was transferred to Registrant, Steven Pascale, on or about April 3, 2014, well after the MCLIP Mark’s registration date” (paragraph 3, page 7); and “Complainant submits that Respondent has registered and continues to use the domain www.mclip.com in bad faith. Upon information and belief, Respondent had prior knowledge of the Mark and its accumulated goodwill due to the Mark’s extensive advertising and commercial use across the global marketplace. It follows, therefore, that Respondent illegitimately sought to capitalize on the goodwill of the Mark, acquired through years of commercial use, by purchasing a domain name that was identical to the Complainant’s Mark” (paragraphs 12 through 14, page 10).

The Complainant’s submissions in its Supplemental Filing sent in response to the Panel Order No. 1, to which the Respondent did not reply, are summarized in section 5D, above.

B. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a valid trademark registration for MCLIP in the United States.

The Panel finds that the disputed domain name is identical to the Complainant’s trademark as it reproduces MCLIP in its entirety with the sole addition of the generic Top-Level Domain suffix “.com”, which can be disregarded being a mere technical requirement of registration.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

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 disputed 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 2.0, paragraph 2.1.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent, by not submitting a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.

The Panel notes that, according to the documents submitted by the Complainant and not contested by the Respondent, there is no relation between the Respondent and the Complainant and the Respondent has not obtained any authorization to use the Complainant’s trademark or the disputed domain name.

In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name or that the Respondent might have used, or made preparation to use, the disputed domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute.

In view of the above, the Panel finds that the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.

D. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith.

To proof the Respondent’s bad faith registration, the Complainant needs to demonstrate that the Respondent was or could have been aware of the Complainant’s trademark rights at the time of registration of the disputed domain name and that it registered the disputed domain name with the intention to target the Complainant’s trademark.

In the case at hand, the disputed domain name <mclip.com> was registered on March 13, 2009 while the Complainant’s identical trademark MCLIP was filed on April 20, 2009 and registered on July 13, 2010, with a claim of first use in commerce as of April 1, 2010.

The Complainant stated in the Complaint that the disputed domain name was transferred to the Respondent “on or about April 3, 2014”, but did not provide any evidence to substantiate this allegation. Following the Panel’s request, through the Panel Order No. 1, to provide further comments and documents to support said statement, the Complainant provided a screenshot of a historical DomainIQ report for the disputed domain name showing that, on November 14, 2010, the registrant name was different but the email address was the same as the one currently indicated in the administrative contact details for the disputed domain name, which includes the name and surname of the Respondent. The Complainant therefore corrected its initial submission, stating that the Respondent became the registrant of the disputed domain name on November 14, 2010, and asserted that, at that date, the Complainant had anyway already obtained its trademark registration and started using its trademark in commerce.

In response to the Panel’s request to provide further evidence on the Complainant’s claimed “accumulated goodwill due to the Mark’s extensive advertising and commercial use across the global marketplace”, the Complainant asserted that its MCLIP software is available for download, with a 30-day free trial, at the Complainant’s current web site “www.mclip-software.com”.

The Complainant also claimed that the Respondent, which is located in the United States according to the WhoIs records, had constructive notice of the Complainant’s trademark registration.

The Panel has carefully reviewed all the documents and statements submitted by the Complainant and finds that the Complainant has failed to prove that the Respondent registered and used the disputed domain name in bad faith for the following reasons.

The first issue to be addressed in this case is when the Respondent became the actual holder of the disputed domain name. The Panel concurs with the Complainant that the Respondent already owned the disputed domain name on November 14, 2010, since, notwithstanding the formal change in the registrant name of the disputed domain name shown in the screenshot of the DomainIQ report submitted by the Complainant, the Respondent appeared to be the underlying owner of disputed domain name in view of the indication of the same administrative contact email address as the one currently published in the WhoIs records for the dispute domain name. However, the Panel does not find that the document provided by the Complainant demonstrates that the disputed domain name was transferred from another entity to the Respondent on November 14, 2010, as it does not show the name and/or contact details of the individual or entity which owned the disputed domain name before said date. Therefore, based on the documents provided, it cannot be excluded that the Respondent actually held the disputed domain name since the registration date according to the WhoIs records, which precedes the filing of the Complainant’s trademark.

However, even assuming that the Respondent became the actual holder of the disputed domain name on November 14, 2010, the Panel finds that the Complainant has failed to demonstrate that the Respondent had the Complainant’s trademark in mind when it acquired the disputed domain name.

As to the Complainant’s invocation of constructive notice, the Panel notes that said doctrine is rarely applied in proceedings under the Policy and that exceptions to this general rule usually occur in cases where clear circumstances evidencing cybersquatting are present. See Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172 and Aspenwood Dental Associates, Inc. v. Thomas Wade, WIPO Case No. D2009-0675.

In the case at hand, the Panel notes that the Complainant’s trademark is constituted of a five-letter term which is not highly distinctive and appears to be used also by third parties as an acronym or short version for different expressions.

In addition, the sole evidence of use of the trademark submitted by the Complainant is a screenshot of the web site “www.mclip-software.com” providing a brief description of the Complainant’s mClip Universal Video Converter program and a link to download it. The Panel notes that the Complainant has provided no additional element (such as sales volumes, advertising investments and samples of advertisements) to demonstrate that a substantial portion of the public or its target market associates the term “MCLIP” with the Complainant or its products, notwithstanding the specific request of the Panel Order 1.

As found amongst others in Kellwood Company v. Onesies Corporation, supra, while the Complainant may pursue the Respondent for infringement in a United States Court, where the doctrine of constructive notice may apply, the documents and statements submitted in this case decided are not sufficient to demonstrate the bad faith requirement prescribed by the Policy.

In light of the circumstances of the case, the passive holding of the disputed domain name and the Respondent’s failure to provide accurate contact details in the WhoIs records are not sufficient to demonstrate the Respondent’s bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Sole Panelist
Date: September 12, 2016