WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mamar Group LTD v. Domain Admin, Mrs Jello, LLC
Case No. D2019-1210
1. The Parties
The Complainant is Mamar Group LTD, Canada, represented by Law Dimitriy Chyrkin, Ukraine.
The Respondent is Domain Admin, Mrs Jello, LLC, United States of America (“United States”), represented by Greenberg & Lieberman, United States.
2. The Domain Name and Registrar
The disputed domain name <mamar.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2019. On May 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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 June 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2019. The Response was filed with the Center on June 24, 2019.
The Center appointed David Taylor as the sole panelist in this matter on July 10, 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 Canadian company, incorporated on April 6, 2018. According to the Complainant, the Complainant is a “retail store specializing in retailing a wide variety of consumer goods”. The Complainant is the registrant of the domain name <mamar.ca> from which it operates a retail website. Mamar-branded products included on the Complainant’s website at “www.mamar.ca” include a collapsible straw keychain, a pine wood carving whittling kit, and a “bug destroyer” insect trap.
For use in connection with its retail services, the Complainant is the owner of Trademark Registration No. 5735451, MAMAR, registered on the United States Patent and Trademark Office Principal Register on April 23, 2019 (applied for on June 25, 2018, and indicating a date of first use in commerce of September 1, 2018).
The Respondent is a United States company that operates a business of buying and selling or leasing domain names.
The disputed domain name was first registered on July 19, 1997. According to the Respondent, it acquired the disputed domain name in 2006. From approximately 2001 to 2011, the disputed domain name resolved to a website displaying pornographic content. At some point thereafter, the disputed domain name was subsequently subjected to dynamic redirection, whereby Internet users are redirected to various websites advertising third-party products. The results of such redirection are determined by Internet users’ IP addresses.
Prior to filing the Complaint, the Complainant’s representative contacted the Respondent by email stating, “I want to discuss how to obtain the domain name mamar.com”. The Respondent replied “Send an offer please”, to which the Complainant’s representative replied “my offer $300”.
5. Parties’ Contentions
The Complainant contends, in relevant part, as follows:
The Complainant asserts rights in the MAMAR trademark, including its United States registered trademark. The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent has no connection or affiliation with the Complainant, and that the Respondent has not received any licence or consent to use the Complainant’s trademark in a domain name or in any other manner. The Complainant argues that the Respondent has never used the phrase “mamar” in commerce to identify itself or its services, nor has the Respondent requested registration of any trademark for “mamar”. The Complainant further asserts that the Respondent is not commonly known by the disputed domain name, which clearly refers to the Complainant’s trademark in which only the Complainant has rights.
With regard to registration and use in bad faith, the Complainant notes that the disputed domain name has been used for the posting of pornographic content. The Complainant cites various previous cases in which UDRP panels have determined that pornographic content on a respondent’s website may constitute a significant indicator of bad faith. The Complainant asserts that the disputed domain name is no longer active, however, given its association with a pornographic website for a period of over 10 years, any connection between the disputed domain name and the Complainant’s trademark could reasonably be supposed to tarnish the Complainant’s trademark. The Complainant further submits that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out‑of‑pocket costs directly related to the disputed domain name. The Complainant notes that the Respondent is a domain name investor, and as such, purchases domain names for the purpose of turning Internet traffic into monetary gain through the use of site development, as well as click-through traffic, creation of business ventures, and domain name sales. The Complainant states that the Respondent has been involved in numerous domain name disputes in which the Respondent has been held to have used domain names in bad faith. To summarize, the Complainant argues that the following circumstances are indicative of the Respondent’s bad faith: The domain name was used for a pornographic website; the Respondent’s contact information is not publicly available; the Respondent is a domain name investor who acquired the disputed domain name for the primary purpose of selling it; and, the disputed domain name is passively held with no active content or any contemplated bona fide offering of goods or services.
The Complainant requests transfer of the disputed domain name.
The Respondent requests that the Panel deny the Complaint on the following grounds:
The Respondent claims to be an Internet business which deals in selling or leasing descriptive or generic domain names. The Respondent states that it has owned the disputed domain name since 2006. The Respondent explains that the disputed domain name is composed of the word “mamar”, which has several meanings, including the Spanish word “to suckle”, “to feed”, “to knock back”, the Romanian word for “breast”, as well as denoting geographic locations. The Respondent states that the website previously appearing at the disputed domain name captured the meaning of the word “mamar”, i.e., “to suck”. That website was allegedly operative until 2013 when the founder of the Respondent passed away, after which the disputed domain name was redirected to pay-per-click web pages, being easier to manage. The Respondent explains that the disputed domain name is now subject to a “zero-click” system, whereby the web page shown differs based on the IP address of the Internet user. With regard to the use of “zero-click” systems, the Respondent states that domain name owners have no control over the advertisements shown.
The Respondent submits that it has used the disputed domain name as a mark at common law for providing advertising services for others since 2013, i.e., for five years prior to the Complainant’s use of the MAMAR trademark for retail services. As such, the Respondent asserts that it has acquired common law trademark rights in the disputed domain name.
The Respondent argues that it is well established that the first party to register a domain name without intent to take advantage of another’s reputation has committed no actionable wrong. The Respondent asserts that the registration of domain names composed of dictionary terms that may in the future correspond to a newly acquired trademark does not violate the Policy. Noting that the disputed domain name is composed of a dictionary term with a variety of meanings, the Respondent also notes that there are several third-party companies that make use of the word “mamar” as part of or as their entire company name. The Respondent submits that the use of a common word as a domain name, such as “mamar”, when used in connection with a bona fide offering of goods or services constitutes a legitimate interest in the domain name pursuant to paragraph 4(c)(i) of the Policy.
The Respondent also submits that it had no knowledge of the Complainant prior to the Complainant’s contact with the Registrar and its demanding of the transfer of the disputed domain name. At no point did the Respondent intend to create a likelihood of confusion with or disrupt the Complainant’s business. The Respondent argues that the Complainant has based its case on general statements that are not supported in evidence, particularly with regard to the Complainant’s allegations of bad faith.
The Respondent submits that the present dispute constitutes a case of Reverse Domain Name Hijacking, in that the Complainant knew or should have known of the weakness of its case from the outset.
6. Discussion and Findings
To succeed under the Policy, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(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 the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established registered trademark rights in the MAMAR trademark for the purposes of standing under the Policy. The disputed domain name comprises the Complainant’s trademark in its entirety without alteration or addition under the generic Top-Level Domain (“gTLD”) “.com”. For the purposes of comparison under the first element, the gTLD may be disregarded, being a technical requirement of registration; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Panel finds that the disputed domain name is identical to the Complainant’s trademark.
The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted by previous UDRP panels, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
As noted above, the Complainant’s case under the second element is advanced on the basis that the Respondent has not received any authorization from the Complainant to make use of its trademark as a domain name or otherwise, that the Respondent has not used the term “mamar” in commerce to identify itself, and that the Respondent is not commonly known by the disputed domain name, which clearly refers to the Complainant’s trademark in which only the Complainant has rights.
On the other hand, the Respondent asserts rights and legitimate interests in the disputed domain name on two grounds. First, the Respondent claims to be engaged in a legitimate business of buying and selling or leasing domain names composed of dictionary terms, including the disputed domain name. Secondly, the Respondent asserts that it has made use of the disputed domain name for five years to provide advertising services for third parties, and that the disputed domain name has become associated in the mind of the public as a website that advertises for others and has therefore acquired some form of common law rights.
In relation to the Respondent’s claim of rights or legitimate interests in the disputed domain name as a dictionary term, previous UDRP panels have recognized that merely registering a domain name comprised of a dictionary word does not in and of itself automatically confer rights or legitimate interests on the respondent. To assert such rights, the domain name should be genuinely used or intended to be used in connection with the relied‑upon dictionary meaning and not to trade off third-party trademark rights. It may well be the case that the website previously appearing at the disputed domain name (displaying adult content) played sufficiently upon the meaning of “mamar”, i.e., “to suck” in Spanish; however, noting that the disputed domain name has now been subject to dynamic redirection for at least five years, the Panel does not consider the recent use of the disputed domain name to be of a nature to confer rights or legitimate interests on the Respondent by virtue of its dictionary meaning. Notwithstanding the above, there is no evidence on record to indicate that the disputed domain name was intended to trade off any perceived association with the Complainant or its trademark.
The Panel also takes note of the Respondent’s assertion of common law rights in the disputed domain name, resulting from its use of the disputed domain name to provide advertising services for third parties. The Panel does not find this submission to be particularly convincing, as the Respondent has provided no evidence that the disputed domain name has acquired secondary meaning in connection with the Respondent’s advertising services. Specifically, there is no evidence of there being any public recognition of the Respondent’s use of the disputed domain name. Indeed, the fact that the Respondent admittedly retains no control over the advertising displayed on the websites to which the disputed domain name redirects seems to be at odds with such a claim on the part of the Respondent. In light of the above, the Panel accepts the Complainant’s assertion that there is no evidence that the Respondent is commonly known by the disputed domain name.
Noting the critical flaw in the Complainant’s case, as detailed in the following section in relation to bad faith registration of the disputed domain name, the Panel has ultimately found it unnecessary to come to a determination under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy imposes a requirement on complainants that they must prove both registration and use of the disputed domain name in bad faith. Failure to prove one will result in the denial of the Complaint.
The Complainant asserts that the Respondent registered the disputed domain name in bad faith for the purpose of selling it to the Complainant. Generally speaking, UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor); see WIPO Overview 3.0, section 3.1.1. Indeed, the Respondent has built a business of buying and selling or leasing domain names – a fact that has been explicitly acknowledged by the Complainant.
As noted above, the disputed domain name was acquired by the Respondent in 2006. The Complainant was incorporated on April 6, 2018, and has a recorded date of first use of its trademark in commerce of September 1, 2018. It is a well-established principle under the Policy that where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will not normally find bad faith on the part of the Respondent; see WIPO Overview 3.0, section 3.8.1. There is simply nothing in the record to suggest that the Respondent could have had the Complainant’s trademark in mind when the Respondent acquired the disputed domain name, as at that time the Complainant did not exist. See also Green Roads of Florida, LLC v. Privacydotlink Customer 237978 / IMG, INC, WIPO Case No. D2018-2384 and UBUX Pty Ltd. v. Domains By Proxy, LLC / Jeffrey DeWit, Revasser Ventures LLC, WIPO Case No. D2018-2290. The Complainant is unable to prove that the disputed domain name was registered in bad faith, therefore the Complaint must fail.
For completeness, the Panel notes that the Complainant asserts that the pornographic content previously appearing on the website at the disputed domain name could reasonably be supposed to tarnish the Complainant’s trademark, citing, inter alia, ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215: “[…] the use of ABB as part of a domain name for a pornography related website tarnishes the Complainant’s existing marks, which is also evidence of bad faith.” The Panel finds such a submission to be somewhat misguided. As noted by the Panel in ABB Asea Brown Boveri Ltd. v. Quicknet, supra, such marks must already be in existence for there to be a finding that such use of the disputed domain name tarnishes the trademark of a complainant, which for reasons set out above, cannot be said to be the case in the present proceeding.
For the foregoing reasons, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking (“RDNH”)
The Respondent submits that the present dispute presents a case of RDNH in that the Complainant has used the administrative proceeding in an attempt to rob the Respondent of the disputed domain name.
RDNH is defined in the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. Prior UDRP panels have found that facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including unreasonably ignoring Policy precedent, filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, and basing a complaint on only the barest of all allegations without supporting evidence, may support a finding of RDNH; see WIPO Overview 3.0, section 4.16.
While previous UDRP panels have consistently held that a mere lack of success is insufficient for a finding of RDNH, in the present case, the Panel considers that it was clear from the information available to the Complainant at the time of filing, under a plain reading of the Policy and taking account of readily‑available Policy precedent, that the Complainant could not prove the Respondent’s bad faith registration of the disputed domain name. The Panel considers that the Complainant knew, or should have known, that it could not succeed in its Complaint under any reasonable interpretation of the Policy. The above, combined with the Complainant’s failed attempt to purchase the disputed domain name from the Respondent, leads the Panel to conclude that the Complaint was brought in bad faith in an attempt at RDNH and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: July 24, 2019