WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natale Ferrara v. Online Admin, DotBadger Domains
Case No. D2019-0706
1. The Parties
The Complainant is Natale Ferrara, Switzerland, represented by Archilex Consulting SA, Switzerland.
The Respondent is Online Admin, DotBadger Domains, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <eidoo.com> is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2019, 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 April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on May 17, 2019. 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 Swiss company established in 2017 providing online asset management and investment solutions.
The Complainant filed, also in 2017, different trademark registrations and applications across various jurisdictions for the mark EIDOO including:
- National Swiss trademark EIDOO n. 703870, filed on June 14, 2017 and registered on June 23, 2017 in classes 9, 35, 36, 42;
- European Union trademark EIDOO n. 016888661, filed on June 19, 2017 and registered on October 3, 2017 in classes 9, 35, 36, 42;
- International trademark EIDOO n. 1384319, registered on September 20, 2017, in classes 9, 35, 36, 42, designating China, Japan, and the United States of America.
In 2017 the EIDOO trademark was used by Mr. Natale Ferrara and by the company Eidoo Sagl (co-founded by Mr. Ferrara) for Initial Coin Offering (ICO) purposes and the activity raised a total amount of over USD 27 million, attracting considerable media attention.
The disputed domain name <eidoo.com> was registered on June 24, 2009, eight years before the registration of the first of the EIDOO trademark by the Complainant and is currently pointed to a parking page with pay-per-click (PPC) links.
5. Parties’ Contentions
The Complainant states that the disputed domain name <eidoo.com> is identical to its trademark EIDOO, in which the Complainant has rights, as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
i) the Respondent is in no way affiliated with the Complainant and has not been authorized to register any domain name incorporating the trademark EIDOO;
ii) there is no evidence to show that the Respondent has been commonly known by the disputed domain name, even without having acquired any trademark or service mark rights, nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name <eidoo.com> without intent for commercial gain to misleadingly divert consumers;
iii) the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name leads to a parking page with PPC links and there is no way of contacting the Respondent;
iv) since the word “eidoo” is meaningless and does not correspond to any word in the dictionary, the Respondent holds no legitimate rights or interests under the UDRP with respect to the disputed domain name <eidoo.com>.
Furthermore the Complainant points out that, according to a search conducted on the WIPO Global Brand database, no other third party in the world has any right over the trademark EIDOO, concluding that the Complainant is the sole owner of such trademark.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, besides the circumstances listed in paragraph 4(b) of the UDRP, the Panel shall take into account the date of the registration of the disputed domain name as well as the date of the registration of the trademarks upon which the Complaint is grounded, observing that the disputed domain name was registered in 2009 and concluding that “this means before the registration of the first of the EIDOO trademarks, which took place in 2017”.
The Complainant underlines that this fact should not have an impact on the Panel’s assessment of the Complainant’s standing under the first UDRP element and also contends that, “irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the Panel will look to the circumstance at the date the URDP respondent itself acquired the domain name” concluding that such circumstance has to be verified by the Panel, since it is not possible to know the identity of the respondent because the registrant name is hidden.
The Complainant also alleges that even if the Complainant accrued its rights on the trademark EIDOO several years after the registration of the disputed domain name <eidoo.com>, this case falls under the exceptions described under section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), regarding domain names registered in anticipation of trademark rights, making reference to the fact that the ICO conducted by the Complainant in October 2017 caught significant media attention.
According to the Complainant, the Respondent – probably aware of fact that Eidoo Sagl raised over USD 27 million through its ICO – did in fact solicit, on various occasions, the purchase of the disputed domain name from the Complainant, for the amount of USD 75,000 which is without doubt in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
The Complainant also concluded that there is a concrete risk that the disputed domain name could be sold to a third party in order to exploit the commercial reputation of the trademark “EIDOO”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or 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.
A. Identical or Confusingly Similar
The Complainant has established rights over the trademark EIDOO based on the trademark registrations cited in section 4 above, providing the Panel with the related trademark certificates submitted as annexes to the Complaint.
As highlighted in section 1.1.3 of the WIPO Overview 3.0, while the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. 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.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel’s findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the domain name holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
As stated in section 3.8 of WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. In certain limited circumstances, where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
In the case at hand, as also expressly and repeatedly indicated by the Complainant, the disputed domain name was registered by the Respondent over eight years before the first registration of the EIDOO trademark and the Panel finds that none of the above mentioned circumstances could therefore possibly apply in this case.
The Complainant has not submitted, nor provided evidence, that at the time of the disputed domain name’s registration the Complainant intended to file a trademark and that the Respondent could have possibly been aware of it. The fact that the Respondent has contacted the Complainant offering the disputed domain name for sale for consideration well in excess of the out-of-pocket costs directly related to the domain name has no bearing on the present case in light of the requirement under paragraph 4(a)(iii) that the disputed domain name must have been both registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 10, 2019