WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brian Gluckstein v. Domain Admin, Whois Privacy Corp.
Case No. D2019-1510
1. The Parties
The Complainant is Brian Gluckstein, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <briangluckstein.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2019, the Registrar transmitted by email to the Center his 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 July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on August 15, 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 an internationally renowned interior designer whose portfolio includes residential and commercial projects. He is active under his personal name since at least 1998.
Also, the Complainant is by himself or through fully owned companies, the owner of various trademark applications and registrations comprising the name GLUCKSTEIN, such as GLUCKSTEINDESIGN or GLUCKSTEINHOME (the latter registered e.g. as European Union Registration No. 016023004 on February 24, 2017), all of them jointly referred to as “GLUCKSTEIN trademarks” in the following.
The Complainant further owns and operates various domain names like <glucksteinhome.com> and <glucksteindesign.com> since 1999 and 2003, respectively.
The disputed domain name was registered on November 12, 2004.
The Respondent in these administrative proceedings is a privacy service provider. The true identity of the person who initiated the registration of the disputed domain name remains unclear.
The screenshots, as provided by the Complainant in the case file, show that the disputed domain name resolves to a pay-per-click website with links related to interior design and/or furniture, like in the past years. From time to time, the disputed domain name was also offered for sale (Annex 12 to the Complaint).
Prior to initiation of the administrative proceedings, the Complainant tried to solve the dispute amicably by sending a demand letter and asking for a transfer of the disputed domain name in return to a payment of USD 2,500 (Annex 14 to the Complaint). This approach, however, remained unanswered.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to his personal name and confusingly similar to his registered GLUCKSTEIN trademarks.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that he has never granted a permission or license to the Respondent to use his personal name or any of his trademarks. The Complainant further asserts that the Respondent has never used and does not intend to use his personal name and his trademarks in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to his wide recognition since the year 1999, the Respondent must have been aware of the Complainant and his trademarks when registering and using the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is stated that the Panel will, where appropriate, decide consistent with the consensus views captured in WIPO Overview 3.0.
A. Identical or Confusingly Similar
As stated at section 1.8 of the WIPO Overview 3.0, the first requirement under paragraph 4(a)(i) of the Policy, namely confusing similarity, is generally accepted, when the relevant trademark is recognizable within the disputed domain name.
Here, the Panel notes that the disputed domain name comprises the distinctive part of his registered trademarks, namely the term GLUCKSTEIN.
Accordingly, the Panel accepts that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the burden of proof on this second element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In his Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s personal name in an identical and his GLUCKSTEIN trademarks in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a response, the Respondent has further failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
Quite the opposite, the Panel is rather convinced that the Respondent must be well aware that the composition of the disputed domain name carries a risk of implied affiliation or endorsement (see section 2.5.1 of the WIPO Overview 3.0) in relation to the Complainant’s personal name and his GLUCKSTEIN trademarks.
Finally, there is also no indication in the case file that would allow accepting a forfeiture of rights by the Complainant in the present case, even if more than 15 years have passed since the registration of the disputed domain name. Neither the UDRP nor the facts of the case would justify a denial of the Complainant’s claim for transfer of the disputed domain name due to a delay in initiating the present UDRP administrative proceedings. Also, the Respondent did not provide any indication that the Complainant has delayed his Complaint in a legally abusive manner. In the Panel’s view, such indication, if at all, would only be given if the Complainant intentionally had caused the false impression by way of any explicit or implicit behavior that it will tolerate the use of the disputed domain name. The case file, at least, does not contain any such indication that would justify such an assessment of a forfeiture of rights.
As a conclusion, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the disputed domain name is identical to the Complainant’s personal name, the Panel is convinced that the Respondent must have had the Complainant and his renowned business in mind when registering the disputed domain name, particularly as the Respondent registered the disputed domain name several years after the Complainant had acquired significant goodwill and consumer recognition in relation to his personal name.
By creating the disputed domain name, the Panel is convinced that the Respondent aimed at diverting Internet traffic from the Complainant’s (at that time already existing) websites to the Respondent’s site. The Panel finds that the Respondent’s attempt to attract Internet traffic (e.g. by pay-per-click links) is a strong indication for bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel further believes that the Respondent’s various offers to sell the disputed domain name are further indication for its bad faith behaviour.
Finally, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent had legitimate purposes in registering and using the disputed domain name, it would have probably responded.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <briangluckstein.com> be transferred to the Complainant.
Date: August 29, 2019