WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
i-content Ltd. v. Whois Agent, Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC
Case No. D2018-2401
1. The Parties
The Complainant is i-content Ltd. of Berlin, Germany, represented by Harness, Dickey & Pierce, PLC., Germany.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America (“United States”) / Domain Vault, Domain Vault LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <mimail.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2018. On October 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing:
(a) it is the Registrar for the disputed domain name;
(b) registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on October 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 amended Complaint on October 24, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 29, 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
It appears from the Complaint that the Complainant has been operating an Internet and email service from a website at, amongst others, “www.memail.com” since 1995. It has the alphanumeric string “memail” registered as the second level domain name in five other generic Top-Level Domains (“gTLDs”) and 33 country code Top-Level Domains (“ccTLDs”).
The Complainant has registered the trademark MEMAIL as a European Union Trade Mark (“EUTM”) Reg. No. 014695183, and as a United States Trademark, Reg. No. 5409904. The trademarks are registered in respect of a range of goods and services in International Classes 9, 38, 42 and 45. The EUTM was registered on June 9, 2017. The United States Trademark was filed on December 21, 2015 and registered on February 27, 2018.
The disputed domain name was registered on January 29, 2003 and does not resolve to an active website. Entering it into a browser results in a report “404 – File or directory not found”. The Complainant evidenced that the disputed domain name previously resolved to a standard registrar parking website with pay-per-click links.
5. Discussion and Findings
No response has been filed. The Complaint has been sent in accordance with paragraph 2(a) of the Rules, however, to the Respondent at the physical and electronic coordinates the Registrar has confirmed. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for MEMAIL referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's trademark by the substitution of the letter “i” for the letter “e” and the addition of the gTLD “.com”.
Disregarding the “.com” gTLD, the substitution of the letter “i” for the letter “e” can reasonably be regarded as a form of “typosquatting”. See WIPO Overview 3.0, section 1.9. The combination “mi” may often be prounced “my”, but could easily be pronounced as “me” in many languages; “mimail” conveys the same “idea” as “memail” is intended to convey and, while the letters are on opposite “hands” when being typed on a QWERTY keyboard, are both typed with the third finger and by stretching up and forwards along the row.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s name. The Complainant has done a number of trademark searches which did not reveal any registrations or applications for the trademarks “memail” or “mimail”, other than the Complainant’s own trademarks. From the available record, therefore, the Respondent does not appear to hold any trademarks for the disputed domain name. Thus, there is no evidence to support the application of paragraph 4(c)(ii).
The disputed domain name is not in use. So far as the record shows in this administrative proceeding, it has not been in use since at least 2009. There can be no suggestion, therefore, that too short a time has elapsed since registration for the Respondent to set up and launch an intended project using the disputed domain name. Accordingly, neither paragraph 4(c)(i) nor paragraph 4(c)(iii) applies.
In these circumstances and subject to the issue of timing discussed in section 5C below, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
If (as appears to be the case according to the publicly available WhoIs) the Respondent registered the disputed domain name in 2003, that was well before the Complainant acquired its registered trademarks in 2015. In such cases, it is usually difficult to establish that the disputed domain name was registered in bad faith. See WIPO Overview 3.0, section 3.8. In the present case, however, the Complainant has provided evidence showing it has been using its trademark, albeit unregistered, in connection with its website since 1995. The evidence submitted in the Complaint supports the Complainant’s claim that there had been very extensive use of its unregistered trademark by the time the Respondent apparently registered the disputed domain name.
That provides a reasonable basis for inferring, as the Complainant alleges, that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark (albeit unregistered) to take improper advantage of its significance as a trademark.
The Complainant contends that at times when the disputed domain name has been “active” it has been used only to redirect browsers to other websites. According to the Complainant, that conduct was to take advantage of the resemblance of “mimail” to the Complainant’s trademark.
It is also well established under the Policy that the “passive holding” of a domain name registered in such circumstances can constitute use in bad faith: Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 (the Telstra case).
It may be arguable that some of the considerations that led the learned Panel in the Telstra case to the conclusions there reached are not necessarily applicable in the present case. The Respondent, however, has not seen fit to attempt to rebut the serious allegations of bad faith made against it by the Complainant. If there is an explanation for the Respondent’s registration and continued holding of the disputed domain name, therefore, the Respondent has not sought to submit it for consideration.
In the circumstances outlined above and in the absence of a convincing explanation, therefore, the Panel finds that the Complainant has established the Respondent both registered and used the disputed domain name in bad faith.
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 <mimail.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 13, 2018