WIPO Arbitration and Mediation center
ADMINISTRATIVE PANEL DECISION
PT Grahacipta Hadiprana v. Adjie Hadiprana, GlobalPort
Case No. D2019-2711
1. The Parties
The Complainant is PT Grahacipta Hadiprana, Indonesia, represented by Indrajana Law Group, a Professional Law Corporation, United States of America (“United States”).
The Respondent is Adjie Hadiprana, GlobalPort, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <hadiprana.com> is registered with GKG.NET, INC (formerly GK Group LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2019, 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 November 12, 2019, 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 November 13, 2019.
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 November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. On December 2, 2019, the Center received an email communication from the Respondent. On December 6, 2019, the Center received an email communication from the Complainant.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 3, 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 prominent firm of architects in Indonesia. Amongst other things, it owns a registered trademark in Indonesia for HADIPRANA, Registration No. IDM000397973. The trademark was filed on July 5, 2011, and registered on September 19, 2013. It is registered in respect of architecture, building planning, and interior design services in International Class 42.
According to the information supplied by the Registrar, the Respondent registered the disputed domain name on December 20, 2002.
Shortly before the Complaint was filed, the disputed domain name resolved to a webpage for GlobalPort, an internet service provider in Indonesia. At the time this decision is being prepared, the disputed domain name does not resolve to an active website.
5. Discussion and Findings
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.
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.
A. The Complainant’s objection to the Response
Following the provision of the Response, the Complainant emailed the Center objecting to admissibility of the Response.
The Complainant’s email is itself an unsolicited supplemental filing which is admissible only at the discretion of the Panel. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6 .
In the emailed communication received from the Respondent on December 2, 2019, the Respondent points out that his personal surname is Hadiprana and contends that he has used the disputed domain name for his personal email address and that of some members of his family since about 2002. The email further states that “there’s no webpage with the address using the domain name yet…”.
The Complainant contends that this email should be excluded from the record in this proceeding on the grounds that it is not compliant with the requirements of paragraphs 2(b) and (c) of the Rules.
In view of the nature of the objection the Complainant wishes to raise, it is appropriate to accept the supplemental filing. Paragraph 10(b) of the Rules requires the Panel to treat the parties equally and ensure that each is given a fair opportunity to present its case. Plainly, if the Complaint were denied but the objection the Complainant wishes to raise is otherwise soundly based, a substantial injustice would be worked on the Complainant as the basis for its objection could not arise before the Respondent submitted the Response.
Paragraphs 2(b) and (c) of the Rules provide:
“(b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)).”
“(c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including, where applicable, the number of copies) stated in the Provider’s Supplemental Rules.”
The Supplemental Rules specify in paragraph 3 that all submissions will be made either by email (as is the case here) or through the Center’s Internet-based case filing and administration system. The size and format requirements specified under paragraphs 7 and 12(b) of the Supplemental Rules have otherwise been complied with.
The Rules no longer include a paragraph 5(b)(iii) as specified in paragraph 2(b). Paragraph 5(c) is the counterpart (for respondents) to paragraph 3(b) (for complainants) and is in terms paragraph 5(b) of the Rules in the form the Rules took prior to July 31, 2015, when the current Rules came into operation. The requirements for communications specified in paragraph 3 of the Supplemental Rules are also expressly subject to the requirements of paragraph 5(c) of the Rules. Therefore, the Panel considers the cross-reference in paragraph 2(b) should be to paragraph 5(c)(iii) and not paragraph 5(b)(iii).
The Complainant has not indicated in what respects it considers the Respondent’s email does not comply with the requirements of the Rules. In the absence of precise indication of the respects in which the Complainant considers the Respondent’s email non-compliant, the Panel notes that the email:
(a) does not expressly state a preferred means of communication as required by paragraph 5(c)(iii) of the Rules;
(b) does not provide a postal address or telephone or telefax numbers for the purposes of paragraph 5(c)(ii) of the Rules;
(c) does not state that a copy was forwarded to the Complainant as required under paragraph 5(c)(vii) of the Rules; or
(d) conclude with the certification of truth required by paragraph 5(c)(viii) of the Rules.
As the Respondent has responded by email, the Response conforms to the email requirements of the Rules and the Supplemental Rules.
The requirement to state a preferred means of communication in paragraph 5(c)(iii), like the power to nominate an authorized representative contained in the same paragraph, is for the benefit of the Respondent and so the Panel considers it is permissive rather than mandatory. This is because, in default, the Rules provide for communication to the Respondent at the electronic and physical co-ordinates specified in the Registrar’s WhoIs database: see Rules paragraph 2(a) and 4(a). Alternatively, it may be inferred from the fact that the Respondent has responded by email that email is the Respondent’s preferred means of communication. (As on its face, the email comprising the Response includes in its body the email from the Center with the formal Notification of the Complaint sent to the email which the Registrar has confirmed is recorded in the WhoIs database for the Respondent, the Panel is prepared to proceed on the basis that the email is in fact from the Respondent.)
Moreover, the Center has quite properly forwarded all further email communications to the Respondent at both the address confirmed as correct by the Registrar as well as the email address used for the Response. As has been the further communication from the Complainant.
The Panel considers that the same considerations apply to the requirements of paragraph 5(c)(ii) of the Rules, imported by paragraph 3 of the Supplemental Rules.
The failure of the Respondent to include the Complainant as an addressee of the Respondent’s email communication comprising the Response could be a very serious violation of the Policy as it could lead to a Complainant being denied a fair opportunity to present its case as required under paragraph 10(b) of the Rules. That risk has been averted in the present case as the Center copied the Response to the Complainant and the Complainant has not only had an opportunity to make an unsolicited supplemental filing in reply, but has also taken that opportunity.
The failure of the Respondent to provide the certification required by paragraph 5(c)(viii) of the Rules could affect the creditworthiness of the assertions made in the Response. This is discussed further below.
B. 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.
This requirement under the Policy requires only a visual and aural comparison of the alphanumeric string comprising the disputed domain name to the Complainant’s trademark. And, in making that comparison, it is permissible to disregard the generic Top-Level Domain (“gTLD”) component of the disputed domain name as a functional requirement of the domain name system. See WIPO Overview 3.0 , sections 1.7 and 1.11.
Disregarding the gTLD, “.com”, as a functional component of the domain name system, therefore, the disputed domain name is identical to the Complainant’s registered trademark HADIPRANA, registration No. IDM00039773.
Accordingly, the Complainant has established the first requirement under Policy.
C. 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. UDRP 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.
It is plain from the Complaint that the Respondent is not authorized by the Complainant or associated with it in any relevant way.
There is no evidence before the Panel capable of suggesting that the Respondent’s personal name is not Adjie Hadiprana. That prima facie fact raises directly the right or legitimate interest identified in paragraph 4(c)(ii) of the Policy. Further, as noted above, the Respondent claims he uses the disputed domain name only for personal and family email addresses.
The Complainant contends however that the use being made by the Respondent of the disputed domain name was to promote the Respondent’s business as an Internet service provider under the name PT GlobalPort Binekatara. As the services are not offered under the Respondent’s personal name, the Complainant contends that this use does not qualify as use in good faith. Further, according to the Complainant, the fact that only the most basic information about the GlobalPort business is provided at that website “is tantamount to an advertisement that the [disputed domain name] is for sale and not for any other good faith commercial use.”
The Panel does not accept that the website to which the disputed domain name resolved before the Complaint was submitted can be characterised as an offer to sell the disputed domain name, “tantamount” or otherwise.
The Respondent, however, has not provided any objective materials to corroborate the claimed usage for personal and family email. The Respondent has also claimed that the disputed domain name has not resolved to a website. But that claim cannot be accepted in light of the evidence that immediately before the Complaint was filed the disputed domain name did resolve to a website for the Internet services provided by GlobalPort. In fact, a search of the Wayback Machine maintained by the Internet Archive reveals that the disputed domain name has resolved to a page about GlobalPort since 2017.
The registration of the disputed domain name many years before the Complainant registered its trademark in 2011 is also not conclusive of the question or rights or legitimate interests under the Policy in this case. The Complaint includes evidence showing that the Complainant currently enjoys very substantial recognition and reputation in Indonesia today. The Complaint is unclear about when the Complainant was founded. The Complainant points out that its founder had developed a substantial fame and reputation prior to the registration of its trademark. It appears from the Complainant’s website, however, that its founder, a Mr. Hendra Hadiprana, graduated as an architect in 1958 and was appointed “president commissioner” of the Complainant in 1988. Accordingly, the Panel cannot conclude that the Respondent registered the disputed domain name before the Complainant’s name was known in Indonesia.
D. 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.
Paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy.
The Complainant contends that the Respondent is an Internet service provider which registered the disputed domain name for the purpose of selling, renting or otherwise dealing with it for valuable consideration in excess of the Respondent’s out-of-pocket expenses. It says further that the Respondent is at risk of losing its licence to operate as an Internet service provider in Indonesia due to non-payment of regulatory fees. The Complainant points out that the registration of the disputed domain name in the Respondent’s name precludes the Complainant from registering it (and so disrupts its business by preventing it from capitalising on web search traffic). Finally, the Complainant contends that there is no legitimate use of the disputed domain name except in connection with the Complainant’s business.
It may be arguable that the use of the disputed domain name to promote an Internet services business which conducted under a name other than the Respondent’s own surname, Hadiprana, is use of the disputed domain name in bad faith as the Complainant contends. It is unnecessary to decide that question in the present case. That is because the Complainant has to show that the disputed domain name was registered in bad faith when the disputed domain name was registered in 2002.
It is often possible to infer that a domain name was registered for the purpose it is being used for on the basis of the use being made for it. The Panel does not think that inference is possible in the present case.
The evidence of use submitted by the Complainant shows how the disputed domain name was being used in 2019. Records of web crawls maintained by the Internet Archive on the Wayback Machine show that the disputed domain name has resolved to that website, or another similar website for GlobalPort, between 2017 and 2019. Prior to 2017, however, the disputed domain name did not resolve to that webpage or any active website at all. It did not resolve to a parking page with pay-per-click advertising or the like either.
The Panel does not consider it safe to infer registration in bad faith on the basis of conduct which started in 2017, some 15 years after the Respondent registered the disputed domain name.
On the record in this case, it would seem likely that the Respondent registered the disputed domain name because of its correspondence to his own name.
Assuming in the Complainant’s favour that the Respondent did know of the Complainant’s use and reputation in the name “Hadiprana” at the time of registration, that does not mean any registration of the disputed domain name, which on the record in this case is also the Respondent’s own surname, would necessarily show a bad faith intent as the Complainant appears to claim.
As the Complainant has failed to establish that the Respondent registered the disputed domain in bad faith, the Complaint must fail as the Complainant has not satisfied the third requirement under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: January 7, 2020