WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eyeo GmbH v. Domain Administrator, See PrivacyGuardian.org / Marc Pastor, Bets And Bonus
Case No. D2018-1055
1. The Parties
The Complainant is Eyeo GmbH of Cologne, Germany, internally-represented.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Marc Pastor, Bets And Bonus of Sabadell, Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <ublockadblockplus.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 14, 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 May 23, 2018 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 amendment to the Complaint on May 24, 2018. On the same date, the Center received informal communications from the Respondent (see below).
The Center verified that the Complaint together with the amendment to 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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on June 14, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 21, 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 is a German company which supplies a software product which blocks unwanted advertising whilst browsing the Internet. This software is marketed under the name “Adblock Plus”. It is a popular and successful product. One of its competitors (unconnected with the Respondent) markets a similar product under the name “Ublock”.
The Complainant owns registered trademarks for the term “Adblock Plus”, for example United States Trademark, Reg. No. 4680485, registered on February 3, 2015, Annex 3; and European Union Trade Mark, Reg. 009643453, registered June 9, 2011. These trademarks are referred to as the ADBLOCK PLUS trademark in this decision.
Since 2010 the Complainant has operated a website at “www.adblockplus.com” which promotes its product.
The Disputed Domain Name was registered on June 8, 2017. According to the Complaint it has been linked to a website which provides links to a third party store which enables a visitor to download software offered by the Respondent which also blocks unwanted advertising whilst browsing the Internet. The Panel has not been provided with any documentary evidence from the Complainant showing the Respondent’s website, or confirming the details of the Respondent’s software but in the absence of any response challenging this evidence accepts it as accurate.
At the time of this decision the Disputed Domain Name does not resolve to any active website.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(i) that the Disputed Domain Name is confusingly similar to the Complainant’s ADBLOCK PLUS trademark – the Disputed Domain Name is confusingly similar to the ADBLOCK PLUS trademark because it simply combines it with another similar product;
(ii) that the Respondent has no rights nor any 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. The only reason it has registered the Disputed Domain Name is to take advantage of the reputation of the Complainant’s ADBLOCK PLUS trademark for its own commercial gain. This conduct amounts to registration and use of the Disputed Domain Name in bad faith.
The Respondent copied the Center in on correspondence he had with the Registrar. This included the following exchange:
On May 23, 2018 at 17:55: “I don’t understand what do you need.” In reply, the Registrar informed the Respondent “Nothing is required – the Complainant paid to renew the domain”.
On May 23, 2018 at 18:01: “Who paid what?” In reply, the Registrar informed “The Complainant is permitted to pay us to renew the domain and they did so. That is all that occurred”.
On May 23, 2018 at 18:08: “Who is the complainant? How can he renew one of my domains? I don’t get it.” In reply, the Registrar informed “Please ask WIPO for questions regarding UDRP. Or, feel free to read about it on ICANN’s site: https://www.icann.org/resources/pages/help/dndr/udrp-en”.
On May 23, 2018 at 20:41: “who or what is wipo? all this sounds like a joke to me.”
On May 23, 2018 at 21:19: “This domain is from a client who paid for the web development. I’ve contacted him and he says he don’t know anything about that. Who renewed this domain? I need to tell something to my client” and “I really don’t understand what’s going on, the website looks to be still active”.
On May 24, 2018 the Registrar responded “UDRP is certainly not a joke and you have been copied on correspondence from WIPO (in fact, you are copying them on all of your most recent emails). Please ask WIPO to re-send you a copy of the UDRP and please address any other questions to them.
In regard to the renewal, again, the Complainant is able to renew the domain during UDRP proceedings. I am not sure how else to explain this statement. They paid for the renewal and the domain was renewed – it really is that simple”.
No further correspondence was received. In the circumstances the Panel does not consider these emails amount to an informal response and will proceed on the basis that no substantive response has been filed.
6. Discussion and Findings
6.1. Preliminary Matters
The Panel notes this is a case where one of the named Respondents (See PrivacyGuardian.org) appears to be a privacy or proxy registration service. It disclosed details of contact details given by the Respondent when registering the Disputed Domain Name. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel finds the substantive Respondent to be Marc Pastor, Bets And Bonus (or the “client” referred to in the informal correspondence described above, if different) – and references to the Respondent should be understood as being to that person.
The Panel also notes that no formal response has been received from the Respondent. However given the Notification of Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Further the informal correspondence described above shows that the Respondent is aware of the Complaint. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
6.2. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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
The Panel finds that the Complainant has rights in the ADBLOCK PLUS trademark. The Disputed Domain Name simply combines that trademark with the name of another blocking software product, creating a composite term where the Complainant’s trademark is still a prominent feature.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the ADBLOCK PLUS trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The term “Adblock Plus” is clearly being used in the Disputed Domain Name because of its association with the Complainant. On the evidence before the Panel it does not have any other meaning.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
The only one of these which might conceivably be relevant is paragraph 4(c)(i). However for the reasons explained below in relation to bad faith the Panel does not consider the Respondent’s actions to be bona fide and hence the Panel does not consider it applies.
In any event the Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ADBLOCK PLUS trademark. The Complainant has prior rights in the ADBLOCK PLUS trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the ADBLOCK PLUS trademark, the extent of the reputation the Complainant enjoys in this trademark, the confusingly similar nature of the Disputed Domain Name to this trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s ADBLOCK PLUS trademark when it registered the Disputed Domain Name. It combined that trademark with the name of another blocking software product and then used that composite name to link to a website offering its own blocking software to customers. That activity is manifestly within paragraph 4(b)(iv) of the Policy as one of the non-exhaustive list of factors evidencing registration and use in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <ublockadblockplus.com>, be transferred to the Complainant.
Nick J. Gardner
Date: June 25, 2018