WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UBUX Pty Ltd. v. Domains By Proxy, LLC / Jeffrey DeWit, Revasser Ventures LLC
Case No. D2018-2290
1. The Parties
The Complainant is UBUX Pty Ltd. of Telopea, New South Wales, Australia, internally represented.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Jeffrey DeWit, Revasser Ventures LLC of Peoria, Arizona, United States, represented by Thomas W. Galvani, P.C., United States.
2. The Domain Name and Registrar
The disputed domain name <ubux.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 October 15, 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 amended Complaint on October 16, 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 October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Response was filed with the Center on November 8, 2018.
The Complainant filed a first Supplemental Filing with the Center on November 8, 2018. The Complainant filed a second Supplemental Filing with the Center on November 9, 2018, which was rejected for failing to comply with the Supplemental Rules. The Complainant filed a third Supplemental Filing with the Center on November 10, 2018.
On November 11, 2018, the Complainant requested that the proceedings be withdrawn, to which the Respondent objected on November 12, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on December 11, 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 was incorporated in Australia on September 6, 2017.
The Complainant owns Australian trade mark No. 1871710 for UBUX, filed September 7, 2017, registered April 9, 2018, in class 35. The Complainant also owns a pending United States trademark application No. 88114744 for the same term, filed on September 12, 2018, in classes 35 and 36.
As of November 7, 2018, the Complainant operated a website at “www.ubux.com.au”, consisting of a holding message “Stay tuned to an exciting new APP coming soon!” plus a logo and contact form.
The disputed domain name was registered on July 25, 2004.
The Respondent has used the disputed domain name for a website with sponsored listing for assorted services such as “Business Website”, “Find Music” and “Ways to Promote Your Small Business”.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant is investing significant capital in development of its mobile application and in its brand and business.
The disputed domain name is identical to the Complainant’s distinctive trade mark.
The Respondent owns no trade mark, which shows that it does not make any serious claim to the name “Ubux”. Google searches disclose no evidence that the Respondent is actively trading. The Respondent is not registered with the United States Securities and Exchange Commission, in breach of the rules applicable to registration of domain names.
The Respondent’s website is a parked page which generates revenue from sponsored advertisements. This is an illegitimate use of the disputed domain name as the Complainant is only holding it for financial gain and the Complainant has no legitimate association with the disputed domain name. The disputed domain name is not being used for a legitimate business listing service.
There are no contact details or other indications that the Respondent is a real operating business entity.
The Complainant owns the domain names <ubux.com.au> and <ubux.biz> but would like to use the disputed domain name as the primary domain name for its business in both Australia and the United States.
The disputed domain name infringes the Complainant’s distinctive and unusual trade mark. Third party use of the disputed domain name will confuse the Complainant’s customers. As the Complainant invests and grows its brand, the disputed domain name will be seen as reflecting the Complainant’s brand.
The Complainant is operating a legitimate business and it will be damaged, both in trade mark terms and financially, by not having the ability to own and use the disputed domain name.
The following is a summary of the Respondent’s contentions:
The Complainant has offered no evidence of current use of the name “Ubux” in Australia or elsewhere. The Complaint is filled with descriptions about future use, not current use.
The Complainant has not specified a date for the acquisition of rights, but this is unlikely to predate the Complainant’s incorporation on September 6, 2017.
The minimal use of the trade mark on the Complainant’s new website does not create trade mark rights.
Nor can the Complainant rely on registered rights.
Without use of a trade mark, there are no rights in that trade mark.
Not only is the Complainant’s United States application still pending, it is based on the Complainant’s Australian registered trade mark, which itself does not have a use basis. Use is not required and is not examined in Australian trade mark applications. Therefore, the Australian trade mark is not proof of trade mark rights and does not prima facie satisfy the threshold requirement of the first element.
The Respondent has “a minor but legitimate interest” in the disputed domain name. Since at least 2008, long before the Complainant was incorporated, the disputed domain name has resolved to a website featuring links to third party websites which do not compete with the Complainant. The Complainant has not claimed otherwise.
The disputed domain name has not been registered or used in bad faith, because the Respondent’s registration of the disputed domain name predates any rights that the Complainant may have by over a decade. The requirements of registration and use in bad faith are cumulative.
Moreover there is no other evidence of bad faith. The Respondent never offered the disputed domain name for sale to the Complainant.
Not only could the Respondent not have been aware of the Complainant when it registered the disputed domain name in 2004, there is no evidence that the Respondent was or should have been aware of the Complainant at the time of commencement of this proceeding.
If anything, this Complaint was brought in bad faith as an attempt at reverse domain name hijacking. The Complainant knew or should have known that it was unable to prove that the Respondent registered the disputed domain name in bad faith.
6. Discussion and Findings
A. Supplemental Filings
The Complainant has made three unsolicited supplemental filings.
Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the principles which panels take into account when exercising their discretion whether or not to admit unsolicited supplemental filings.
In this case, the Panel has decided not to admit the filings. Not only has the Complainant not explained why it was unable to provide this information in the Complaint, the filings substantially consist of material designed to convey the nature and extent of the technical efforts devoted to the development of its product – none of which are relevant to the key issues in the case, for reasons explained below. Furthermore, one of the filings exceeded the file size limits specified in the Supplemental Rules.
B. Identical or Confusingly Similar
The Complainant’s pending United States trade mark application is insufficient to establish trade mark rights for the purposes of the first element – see section 1.1.4 of the WIPO Overview 3.0.
The Respondent contests the applicability of the Complainant’s Australian registered trade mark on the grounds that use is not a condition of achieving registration of an Australian trade mark. However, when assessing registered (as opposed to unregistered) trade mark rights under the first element, the Panel is not concerned with use, but simply whether or not the Complainant possesses a relevant registered trade mark – which it does. This registered trade mark must be presumed to be valid unless and until the relevant authority decide otherwise, e.g., by revoking it for non-use.
For the above reasons, the Complainant has established rights in the mark UBUX by virtue of its Australian registered trade mark and this is identical to the disputed domain name, disregarding the suffix.
It is unnecessary to consider whether the Complainant had acquired common law rights.
The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusion under the third element below.
D. Registered and Used in Bad Faith
Section 3.8.1. of the WIPO Overview 3.0 observes that, except for limited circumstances involving registration of a domain name to capitalise on nascent trade mark rights, panels will not normally find bad faith on the part of the respondent where a respondent registers a domain name before the complainant’s trade mark rights accrue.
It is not in dispute that the Respondent acquired the disputed domain name in 2004, whereas the Complainant was only incorporated in 2017 and the Complainant’s trade mark rights post-date its incorporation.
As the Complainant and its rights did not exist in 2004, the disputed domain name could not have been registered in bad faith. This is fatal to the Complainant’s case, irrespective of the nature of any later use of the disputed domain name, as the Complainant is required to prove both registration and use in bad faith.
The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
E. Reverse Domain Name Hijacking (“RDNH”)
The Respondent argues that the Complainant has engaged in RDNH on the grounds that the Complainant knew or ought to have known that it was unable to prove registration in bad faith.
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”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
See examples of the reasons articulated by panels for finding RDNH at section 4.16 of the WIPO Overview 3.0.
Taking into account the tone and nature of the Complainant’s submissions and correspondence, the Panel has the impression that, while the (unrepresented) Complainant did delve into the Policy to some degree, it did not fully understand it and was oblivious to the fact that its ship was bound to founder on the rock of registration in bad faith. The Panel doubts whether the Complainant would have initiated this proceeding had it known this.
After filing its Complaint, the Complainant sent a series of further communications, some with evidence attached, in what appear to have been increasingly anxious, albeit misdirected, attempts to shore up its case. These efforts initially escalated after the Response was filed but ultimately the Complainant realised that its case was doomed and sought withdrawal of the case, a request rejected by the Respondent (for entirely valid reasons).
In these circumstances, and notwithstanding the fatal flaw in the Complainant’s case, the Panel considers on balance that it would be unfair to characterise the Complaint as a bad faith attempt by the Complainant to deprive the Respondent of the disputed domain name.
For the foregoing reasons, the Complaint is denied, but the Panel declines to make a finding of RDNH.
Date: December 17, 2018