WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hartmobile B.V. v. Allen Goldberg
Case No. D2016-2647
1. The Parties
The Complainant is Hartmobile B.V. of Amsterdam, Netherlands, represented by Chiever B.V., Netherlands.
The Respondent is Allen Goldberg of Miami Beach, Florida, United States of America (“United States”), represented by John Berryhill, Phd. Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <qwic.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 December 30, 2016. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 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 January 11, 2017. On January 30, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to February 4, 2017. The Response was filed with the Center on February 5, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on February 13, 2017. 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 February 22 and 23, 2017, the parties submitted communications to the Center requesting a suspension of the proceeding in order to explore settlement options. On February 24, 2017, the Panel issued Procedural Order No. 1 granting the suspension of the proceeding until March 16, 2017.
On March 14, 2017 the Respondent informed the Center that it would like to end the suspension and proceed to a decision in this matter. On March 16, 2017, the parties submitted further email communications to the Center. The Panel has considered the parties’ email communications of March 16, 2017 but does not find that they change the outcome of this proceeding.
4. Factual Background
The Complainant manufactures and sells electrical bikes under the mark QWIC. It has operated since 2006 from the Netherlands and its products are sold in numerous countries. It owns trade mark registrations for the QWIC mark and for various combined marks that contain the QWIC mark including in particular Benelux trade mark registration number 1120905 for QWIC registered on June 7, 2007. The Complainant operates a website for its products from its domain names <qwic.nl> and <qwicgb.com>.
The Respondent acquired the disputed domain name on April 15, 2006. The disputed domain name was originally registered in 2002.
The disputed domain name resolves to a parking page with pay-per-click links.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights in the QWIC mark as set out above and that the disputed domain name wholly incorporates its mark and is therefore identical or confusingly similar to the Complainant’s QWIC trade mark.
The Complainant submits that it has no knowledge that the Respondent or any other entity has rights in the QWIC mark in relation to electrical bikes and that the Respondent has no connection or relationship to it and it has never granted the Respondent the right or a licence to use its trade mark. It further says that the Respondent does not use the disputed domain name in relation to a bona fide offering of goods or services and is not known by the disputed domain name.
The Complainant says that the disputed domain name resolves to a website that carries links to third party vendors of electrical bikes and accessories similar to those sold by the Complainant and a check on “www.archive.org” indicates that there has never been a legitimate website active at the disputed domain name since initial registration.
As far as bad faith is concerned the Complainant says that because of the degree of renown attaching to the QWIC mark it is highly unlikely that the Respondent was unaware of its rights upon registration.
It says that the fact that the Respondent registered the disputed domain name through a privacy service and that the website to which the disputed domain name resolves features pay-per-click advertising with links to advertisements for electric bikes only serves to underline the Respondent’s bad faith. In addition, says the Complainant, the Respondent failed to respond to its warning letter or reminders sent in December 2016.
Finally the Complainant asserts that the Respondent was under a duty to investigate third-party trade mark rights at the time of registration of the disputed domain name as a consequence of section 2 of the Policy.
The Respondent submits that he registered the disputed domain name in April 2006 prior to the Complainant commencing any trading activity and he notes that there is no evidence of the Complainant having used its domain name <qwic.nl> until 2007. He says that his registration of the disputed domain name was made on the basis that it was a short domain name that corresponds to the word “quick” and was relevant to the notion of fast instructional materials for which he had at that time registered a number of domain names.
He says that prior to this dispute he had never heard of the Complainant. The Respondent notes that he has moved around often over the last few years and owns a number of domain names and this explains his lack of attention to updating his contact information and his use of a privacy service to avoid change of address difficulties and that he has never knowingly provided inaccurate information and that when the Registrar asked him to update his details following the filing of this Complaint he did so.
The Respondent submits that the Complainant does not show that the word “qwic” is exclusively or famously associated with the Complainant and that his right to register the disputed domain name is senior to any trade or service mark shown by the Complainant. He says that he has had nothing to do with the pay-per-click advertising put on the site by the Registrar and receives no benefit from it. He notes that upon receiving the Complaint he checked the website at the disputed domain name and found no advertisements for electric bicycles or for anything else there. He submits that he now understands from previous decisions that what people see on registrar’s parking pages may also depend on where they are located, their browser history, and other factors. He submits that he has never used the disputed domain name for anything to do with electric bicycles.
The Respondent says that the Complainant adopted a mark identical to the disputed domain name without consulting him and that it then started advertising its mark with the intent of making the Complainant’s advertisements show up in Internet searches. Now says the Respondent, the Complainant is blaming him for activities that the Complainant has conducted. The Complainant did not do a search for Internet domain names belonging to others before applying for its trade marks. In summary, the Respondent says that the Complainant seems to want to accuse him of unlawful activities for the consequences of the Complainant’s own actions. This, submits the Respondent, cannot amount to bad faith registration and use.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in the QWIC mark, namely Benelux trade mark registration number 1120905. The disputed domain name wholly contains the QWIC mark without any distinguishing element before “.com”. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that it has no knowledge that the Respondent or any other entity has rights in the QWIC mark in relation to electrical bikes and that the Respondent has no connection or relationship to it and it has never granted the Respondent the right or a licence to use its trade mark. It has further submitted that the Respondent does not use the disputed domain name in relation to a bona fide offering of goods or services and is not known by the disputed domain name. In addition, the Complainant has noted that the disputed domain name resolves to a website featuring pay-per-click links including to third party vendors of electrical bikes and accessories similar to those sold by the Complainant and a check on “www.archive.org” indicates, according to the Complainant, that there has never been a legitimate website active at the disputed domain name since initial registration.
In rebuttal the Respondent says that it acquired the disputed domain name before the Complainant registered its first trade mark and before there is any evidence that the Complainant had used its mark. Further the Respondent, based in the United States, submits that there is no way that it could or should have known of the Complainant’s business or interest in the QWIC mark at the time that it registered the disputed domain name.
For the reasons set out below under section C, the Panel finds that there is nothing on the record to suggest that the Respondent could or should have known of the Complainant or of its interest in the QWIC mark at the date of registration of the disputed domain name. Accordingly, it cannot be said that the Respondent had no right or legitimate interest in the disputed domain name at the date of its registration. The Panel therefore finds that the Respondent has successfully rebutted the prima facie case made out by the Complainant and the Complaint fails under this element of the Policy.
C. Registered and Used in Bad Faith
The Policy requires that for a complaint to succeed under this element the Complainant show that the disputed domain name was both registered and used in bad faith.
The disputed domain name was acquired by the Respondent on April 15, 2006. It incorporates a coined word that is the phonetic equivalent of “quick” but nevertheless of a spelling that is not used in the English language and is therefore unusual.
At that time the Complainant had not yet commenced its business under the QWIC mark. It did not make application for its Benelux trade mark until October 13, 2006 and there is nothing on the record to suggest that it was already using the QWIC mark by April 15, 2006. In these circumstances the Panel finds that the Respondent, based in the United States and working in an entirely different field of activity to the manufacture and retail of electric bicycles, could not have known of the Complainant’s potential business or interest in the QWIC mark when it acquired the disputed domain name and as a result could not have registered the disputed domain name in bad faith.
Having made this finding the Complaint must fail and it is unnecessary for the Panel to make a finding concerning use in bad faith. However, the Panel notes that the Respondent has not used the disputed domain name actively but has allowed it to be used by the Registrar to resolve to a pay-per-click parking page. Not all such use amounts to use in bad faith and in the particular circumstances of this case the Panel accepts, on the balance of probabilities, the credibility of the Respondent’s explanation for this use, its explanation concerning its omission to update domain name details, the reasons for its use of a privacy service and its confirmation that it has not benefited from use of the pay-per-click parking page. In the Panel’s view and considering the Respondent’s explanation of the circumstances this is not a case of conduct that amounts to bad faith use. It follows that even if the Panel did subscribe to the line of reasoning from the Octogen cases (which it does not) this is not a case, as suggested by the Complainant, in which it could be applied in any event.
The basic premise underlying the Policy, subject to a showing of bona fide pre-existing trade mark rights, is “first come-first served”. In this case and based on evidence on the record, the Respondent was clearly first in time. The Panel notes that the Complainant subsequently had its agents make an international trade mark application based on the Benelux application and also obtained the domain names <qwic.nl> and <qwicgb.com>. The Panel finds it difficult to believe that the Complainant was not made aware by its trade mark agents in 2006 or 2007 of the Respondent’s ownership for the disputed domain name. This therefore appears to be a case in which the Complainant has sought to launch a rearguard action to obtain a domain name which it most likely knew from the outset was not available. However in circumstances that the Respondent had never made an actual use of the disputed domain name and that the Complainant could not have been aware of the circumstances surrounding non-use as subsequently described by the Respondent, then a UDRP panel following the Octogen line of reasoning might in other circumstances have come to a different view. In this light it cannot be said that the Complainant had no hope at all of succeeding on its Complaint and as a result, although this is a borderline case, on balance, the Panel has decided not make a finding of reverse domain name hijacking on this occasion.
For the foregoing reasons, the Complaint is denied.
Date: March 20, 2017