WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miray Software AG v. Perfect Privacy, LLC / Collin Woo
Case No. D2018-0845
1. The Parties
The Complainant is Miray Software AG of Munich, Germany, represented by Middleton Reutlinger, United States of America (“United States”).
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Collin Woo of Hemet, California, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <miray.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2018, 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 April 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent a request for clarification to the Complainant on April 24, 2018. The Complainant filed an amended Complaint on April 27, 2018.
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 May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent requested the automatic four calendar day extension for response under paragraph 5(b) of the Rules which was granted by the Center such that the due date for response was May 26, 2018. The Response was filed with the Center on May 26, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 12, 2018. 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 sells and distributes computer software worldwide. It was originally founded in 1996 under a different name and was renamed “Miray” on January 1, 2000.
In a declaration, the Complainant’s CEO and President states that the Complainant checked availability of the disputed domain name at around the time of its name change and found that it was available for registration. The Complainant did not register the disputed domain name. The declaration goes on to note that after the Complainant filed its trademark registration it identified a registrar to register the disputed domain name on March 24, 2000 by which time the Respondent had registered it and accordingly the Complainant registered other domain names and went on to establish a web presence. The declaration explains that the Complainant grew year on year and began selling internationally in 2003 with the first sales to customers in the United States commencing in April 2004.
The Complainant notes that it produces a well-known software product named “HDClone” in respect of which it has sold hundreds of thousands of licenses. Millions of free versions of this product have been downloaded. The Complainant adds that its products are sold to customers in 160 countries.
The Complainant is the owner of German trademark registration no. 30020310 for the word mark MIRAY, filed on March 16, 2000 and registered on October 27, 2000, covering international classes 9, 38, 42 and 45.
The Complainant states that it made contact with the Respondent in August 2011 to discuss a potential purchase of the disputed domain name although the Parties were unable to agree terms. The Complainant states that, in an initial telephone conversation, the Respondent sought USD 60,000 for the disputed domain name along with 20% of the Complainant’s stock. The Respondent denies this. The Complainant adds details of further discussions between the Parties which took place between March and August 2017. These also did not lead to any agreement regarding a sale of the disputed domain name.
The disputed domain name was created on February 7, 2000 and it is currently inactive. The Respondent provides evidence by way of an email showing that it was the original registrant, having initiated the registration via a domain name registrar on the preceding day. The Respondent states that it purchased the disputed domain name in good faith for use as a real estate investment business, providing evidence that it has incorporated a Washington, United States limited liability company named Miray Investments, LLC which was registered on August 11, 2014. The Respondent also provides evidence via a link to the relevant official property register that such company purchased real property in Washington, United States, on September 15, 2014. The Respondent notes that his other purpose for the disputed domain name was for a family tree or “family generational log”. The Respondent adds that he is of Korean descent and that in Korea the word “Miray” means “the future” and that this can be demonstrated via the Google translate website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name incorporates the Complainant’s trademark in its entirety, both in terms of its German registered trademark and as an asserted common law trademark in the United States due to acquisition of a secondary meaning by virtue of significant sale, licensing and/or download of products in the United States. The Complainant submits that this is sufficient to establish identity or confusing similarity for purposes of the Policy.
The Complainant states that the Respondent is not now, nor has ever been, an authorized dealer or licensee of the Complainant, adding that this allegation alone is sufficient to constitute a prima facie showing by the Complainant that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has never used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, has never sold any products through the disputed domain name and has never had any real content on the associated website.
The Complainant describes the history of the website to which the disputed domain name points, noting that this has featured “under construction” messages, links to random websites for a variety of goods and services, has purported to have links to a future website which only directed back to the disputed domain name and has featured headers for a hosting company. The Complainant adds that at the time of filing the said website could not be reached.
The Complainant argues with reference to previous cases under the Policy that where it is established that a party has not made use of a domain name, either for noncommercial speech or to sell goods or services, this may demonstrate that the respondent does not have a legitimate interest with respect to such domain name. The Complainant adds that there is nothing to indicate that the Respondent has done anything but sit on a parked/inactive domain name for many years. The Complainant asserts that the Respondent only registered the disputed domain name for the purpose of blocking any rightful user of the term “Miray”, including the Complainant, from being able to register the disputed domain name and then forcing the Complainant to pay a large sum of money to obtain the disputed domain name from the Respondent.
The Complainant submits that a basic Google search supports the allegation that the Respondent does not have rights to and does not otherwise use the term “Miray”, noting that this primarily yields references to the Complainant together with uses by a hotel in Turkey and a cosmetics store in Phoenix, Arizona, United States. The Complainant concludes that the Respondent is not using the disputed domain name at all and only registered the disputed domain name to profit from the Complainant by warehousing an otherwise valuable domain name so that it can profit at a later date.
The Complainant accepts that it did not register the disputed domain name in January 2000 when it changed its name, adding that it was “focused on obtaining its German trademark registration and conducting business in Germany”. The Complainant notes that the Respondent registered the disputed domain name 36 days before the Complainant filed its trademark but adds that this was after the Complainant had begun to use its trademark in Germany. The Complainant asserts that the circumstances support a finding in its favor because the overriding objective of the Policy is to prevent abusive domain name registration and instead protect use for the benefit of legitimate trademark owners, adding that the Respondent has not used the disputed domain name for any purpose since it registered it many years ago, nor has it provided any evidence demonstrating any preparations to use it for a legitimate purpose. The Complainant notes that even though the Respondent is now cognizant of the Complainant’s trademark rights, it has refused to transfer the disputed domain name to the Complainant as the legitimate trademark owner.
The Complainant asserts that prior panels have recognized that bad faith registration can arise prior to the Complainant obtaining formal trademark rights in the disputed term, citing a variety of cases under the Policy.
The Complainant narrates its various attempts in 2011 and 2017 to reach agreement with the Respondent in respect of a sale of the disputed domain name which it notes were all abortive.
The Complainant submits that the fact that the disputed domain name has been passively held for 18 years and that there is no evidence that the Respondent has ever used or been known by the term “Miray” supports a finding of bad faith registration, adding that the evidence infers that the Respondent registered the disputed domain name for the purpose of selling it to someone who could use it to their commercial advantage or for the purpose of preventing a legitimate user of the name from using it. The Complainant states that the Respondent could not now make legitimate use of the disputed domain name without otherwise infringing the Complainant’s trademark rights.
The Complainant asserts that bad faith may be found in the present case based on passive use of a website as described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant adds that bad faith may also be inferred from the Respondent’s use of a proxy or privacy service and notes that any delay in asserting its rights should not serve to bar the Complainant’s claim.
The Respondent contends that the Complaint should be denied. The Respondent narrates the circumstances and reasoning for its registration of the disputed domain name as outlined in the factual background section above. The Respondent also points out that it registered the disputed domain name in 2000 while the Complainant did not incorporate until 2006.
The Respondent states that it purchased the disputed domain name in good faith and adds that it has more than three years standing with the State of Washington, United States. The Respondent points to the legitimacy of the property which its company holds by reference to the Pierce County, Washington, United States’ Assessor’s website.
The Respondent says that it has no history or reputation of ever cybersquatting whether in the past or present, adding that there is no evidence that the disputed domain name is in competition with or slandering the Complainant.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
The Panel finds that the Complainant has established that it has rights in the MIRAY registered trademark as cited in the factual background section above. This mark is identical to the second level of the disputed domain name. The generic top-level domain (“gTLD”), in this case “.com”, is typically disregarded for the purposes of the comparison between the trademark and the domain name.
The disputed domain name was created some eight months before the Complainant’s trademark was registered. However, as section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) indicates, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case nor a panel’s finding of identity or confusing similarity under the first element.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
There are two elements to the inquiry under this part of the Policy. These are conjunctive. The Panel must first determine whether the Respondent registered or acquired the disputed domain name in bad faith. Secondly, assuming a finding of registration in bad faith, the Panel must go on to determine whether the disputed domain name is also being used in bad faith. For the Complainant to prevail, each of the two elements of bad faith registration and use must be found to be present.
In the present case, the Panel determines that there is no evidence of registration in bad faith on the present record. There must be some evidence (or the ability to make a reasonable inference from the circumstances) that the Respondent was targeting the Complainant’s mark, or, as in the various previous cases cited by the Complainant, that the Respondent was targeting the Complainant’s nascent (typically as yet unregistered) trademark rights at the point when it registered the disputed domain name (on the latter topic, see the discussion in section 3.8.2 of the WIPO Overview 3.0).
In the present case, there can be no targeting of the Complainant’s trademark which was neither filed nor registered when the disputed domain name was created. Furthermore, the timeline renders any alleged targeting of nascent trademark rights highly improbable. The Complainant makes no plausible suggestion of any way in which the Respondent might have had any knowledge of the Complainant, of its name change, of its business activities or of any such nascent rights in the MIRAY mark. The Complainant even admits by way of the declaration from its senior officer that at the time it changed its company name to “Miray” it was a very small company based in Germany and focused on the German market. It admits to making no sales in the United States where the Respondent is based until some four years later. How then could the Respondent, on the west coast of the United States, have become aware of and had intent to target it? The Complainant notably does not address this obvious weakness in its contentions other than to point to the proximity in timing between the Complainant’s change of name and the Respondent’s registration of the disputed domain name which are 36 days apart. Given the other circumstances of the case, however, and in the absence of any other evidence of targeting, the Panel is satisfied that this proximity must be mere coincidence.
As was discussed in Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535, the fact that parties may be in different jurisdictions is not in and of itself conclusive on the issue of bad faith targeting particularly if the complainant has a significant online presence. In the present case, it must be noted that there is no evidence that the Complainant had any online presence at all when the disputed domain name was registered and, on the contrary, ample evidence that it had no online presence under a domain name featuring the “Miray” name. The Complainant freely admits that it did not have any web presence relating to this name until after it registered its own domain names, which it did upon identifying that the Respondent had already registered the disputed domain name.
It should be noted that if the Complainant has failed to prove on the balance of probabilities that there was any abusive intent on the part of the Respondent relative to the Complainant’s rights when the disputed domain name was registered, the Respondent does not have anything to answer. The burden of proof regarding registration in bad faith rests upon the Complainant. Nevertheless, for completeness, the Panel adds that the Respondent’s explanation that it chose the name “Miray” because it is the Korean word for “the future” appears to be credible based on the link to the Google translate website provided by the Respondent. The Panel notes that the transliteration for the term is given on the site as “milae” but, with the caveat that the Panel does not speak the Korean language, accepts that the phonetic rendering which may be played back sounds rather more similar to “miray” than “milae” to the Panel’s ears. In short, the Panel has no reason to disbelieve the Respondent and, given the analysis of the timeline, does not disbelieve it. The Panel adds for completeness that the Respondent’s present use of the disputed domain name for its real estate business strikes the Panel as perfectly legitimate albeit that this is less relevant to the question of registration in bad faith given that it was adopted some 14 years into the life of the disputed domain name.
As the Complainant has failed to prove registration in bad faith, there is no need for the Panel to give consideration to its submissions regarding passive holding of the disputed domain name or its discussion of its various attempts to persuade the Respondent to sell the disputed domain name to it. The Panel merely notes that a registrant who has registered a domain name in good faith is entitled to behave as the Respondent has done in this case, namely to publish any or no content at the associated website, to name its price for such domain if approached by an interested party if it is willing to enter into negotiations to sell it, and ultimately to break off communication with a prospective purchaser if suitable terms cannot be agreed.
In the above circumstances, the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy and accordingly the Complaint fails.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking 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”. Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (see paragraph 4.16 of the WIPO Overview 3.0). The Panel considers that all of the circumstances must be reviewed, on an objective basis, to determine whether the Complaint was brought in bad faith.
Previous panels under the Policy have found complainant bad faith and an abuse of the administrative proceeding where the complainant or its representative knew at the time of filing the complaint that the complainant could not prove the respondent’s bad faith registration (see for example New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415). In the present case, the Complainant knew from the timeline that there is no reasonable possibility that the Respondent could have been targeting the Complainant’s then non-existent (or at best, nascent) trademark rights. The Complainant made several key admissions which together demonstrate that it was perfectly well aware that the Respondent knew nothing of the Complainant in February 2000, when it registered the disputed domain name. First, the Complainant admits that it was a very small company. Secondly, it admits that it was focused on the German market and sold no product into the United States for a further four years. Thirdly, it admits that it had no web presence under the “Miray” name when the disputed domain name was registered. Fourthly and finally, its German registered trademark was not even filed until after the disputed domain name was registered and did not proceed to grant until some further months had passed.
The Complainant’s accounts of its attempts to purchase the disputed domain name indicate that this case has certain features of a “Plan B Reverse Domain Name Hijacking case” (see Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653). It has been emphasized in previous cases under the Policy that UDRP proceedings should not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that pre-dates any trademark rights held by the complainant (see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535; and Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905).
In all of these circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: June 26, 2018