WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AIRY GreenTech GmbH v. Privacydotlink Customer 3050720 / Samsu Sempena
Case No. D2020-1119
1. The Parties
The Complainant is AIRY GreenTech GmbH, Germany, represented by Office Freylinger S.A., Luxembourg.
The Respondent is Privacydotlink Customer 3050720, Cayman Islands, United Kingdom / Samsu Sempena, Singapore, represented by Fusion Law, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <airy.com> is registered with GoDaddy Online Services Cayman Islands Ltd. (previously Uniregistrar Corp) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2020, 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 May 12, 2020, 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 May 14, 2020.
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 May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2020. On June 6, 2020, the Respondent requested an extension of the Response due date. On June 8, 2020, the Center granted the Respondent the automatic four calendar day extension for Response under paragraph 5(b) of the Rules. The Response was filed with the Center on June 11, 2020.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 19, 2020. 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 German company with an address in Hamburg, Germany. Other than noting the terms of its registered trademarks, the Complainant provides no information as to the nature or extent of its business. The Respondent provides evidence suggesting that the Complainant produces plant pots designed to improve surrounding air quality.
The Complainant is the owner of German registered trademark no. 39802101 for the word mark AIRY, registered on June 2, 1998 in classes 11, 16, 18, 20, and 21 (plastic flower vases and pots, furniture, office requisites, bags, boxes and packaging) together with various other trademarks for said word mark registered from 2015 onwards, in a variety of territories, covering plants, plant pots, watering systems and other related items. According to the relevant trademark register, the Complainant appears to have acquired said German registered trademark by assignment dated September 22, 2015 and recorded in the register on October 15, 2015. The Complainant does not provide any information regarding the previous holder of the mark or how such mark was used prior to such assignment.
Between May 8, 2015 and October 13, 2015, the Complainant corresponded with two brokers at an organization named DomainNameSales.com regarding a potential purchase of the disputed domain name. Said brokers informed the Complainant that they were representing the then registrant of the disputed domain name. The Complainant’s maximum offer for the disputed domain name over this period was USD 40,000 and the brokers’ stated minimum proposed price was USD 80,000. Accordingly, no agreement could be reached between the Complainant and said brokers. Between March 25, 2017 and August 8, 2017, the Complainant continued this correspondence with another broker representing Uniregistry Corp., which appears to have taken over the business of DomainNameSales.com. The Complainant’s maximum offer over this period was USD 5,000 and, again, no agreement could be reached between the Complainant and this broker as to price. On March 28, 2019, said broker wrote to the Complainant noting that its client could accept payment for the disputed domain name over a period of time and suggesting that a call be scheduled to discuss.
On October 29, 2019, the Complainant’s representative sent a cease and desist notice to the registrant noted on the corresponding WhoIs record for the disputed domain name, namely Privacydotlink Customer 3050720. No response was received to this notice.
The Respondent is an individual who is currently employed as the Chief Technology Officer of an Indonesian company named PT Airy Nest Indonesia (“Airy Nest”) which was incorporated on January 9, 2017. The Respondent’s employment was transferred to that company in 2017. Prior to this, the Respondent had been employed by a Singaporean company named Traveloka Technology Pte. Ltd. (“Traveloka”). Traveloka is a minority shareholder of Airy Nest. Airy Nest’s majority shareholder is a Singaporean company named Nest Tech Pte. Ltd. (“Nest Tech”).
Traveloka is the owner of around 30 registered trademarks in a variety of territories for the mark AIRY (word marks, together with a variety of figurative marks representing the blue or black stylized lowercase word “airy” in a skywriting script-style typeface along with a cloud device) including, for example, Singaporean registered trademark No. 40201518864R for the word mark AIRY, registered on October 30, 2015 in classes 35 (advertising), 36 (insurance and real estate), and 43 (food and drink, temporary accommodation). A letter from a director of Traveloka dated June 11, 2020 confirms that Airy Nest is authorized to use Traveloka’s trademarks within the territory of Indonesia from 2017.
According to the WhoIs record, the disputed domain name was created on October 5, 2003. Screenshots provided by the Complainant dated April 29, 2020 show that as at that date the disputed domain name pointed to a website at “www.airyrooms.com” which appears to be in the Indonesian language and offers hotel booking services and cheap flights. The Respondent provides evidence showing that the registrant of the corresponding domain name <airyrooms.com> is Airy Nest. The relative WhoIs record, provided by the Complainant, indicates that said domain name was created on September 4, 2015.
A bank transfer form produced by the Respondent dated August 4, 2017 indicates that on or about that date Nest Tech purchased the disputed domain name by transferring to the then registrar, Uniregistrar Corp., the sum of USD 150,000, referencing a specific invoice number. The transaction is further corroborated by an exchange of email between a “market” email address at Uniregistrar Corp. and a person using an email address at the <airyrooms.com> domain name, whereby the former issued an invoice and the latter confirmed that payment had been made. The Respondent was copied on the emailed confirmation of payment.
On May 22, 2020, the Respondent issued an email to the “Uniregistry Brokerage Team” to seek its confirmation as to whether it had continued to correspond with the Complainant regarding the disputed domain name after this had been sold to the Respondent. The Respondent indicated in its email that it had given no authority for such correspondence to be entered into on its behalf. According to the Respondent, no reply has been received to said email.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is not being used but redirects to a third party website relating to hotel booking. The Complainant notes that it attempted to resolve its dispute with the Respondent amicably by making an approach to a domain broker to secure the transfer of the disputed domain name, adding that the broker proposed a price of USD 80,000 which ultimately rose to USD 150,000. The Complainant states that it was unwilling to accept such price and ultimately issued the cease and desist notice to the Respondent, described in the factual background section above, to which it did not receive a reply.
The Complainant notes the terms of its various registered trademarks in the mark AIRY and asserts that the disputed domain name reproduces this mark in its entirety, adding that the presence of the generic Top‑Level Domain is insufficient to avoid a finding of confusing similarity. The Complainant submits that the Respondent is not affiliated with the Complainant in any way, is not authorized by the Complainant to use and register its trademarks or to seek registration of any domain name incorporating its trademarks, and has no prior rights or legitimate interests in the disputed domain name. The Complainant contends that the disputed domain name is “so identical to the Complainant’s trademark” that the Respondent cannot reasonably pretend it was intending to develop legitimate activity thereby.
The Complainant states that the Respondent never offered a positive answer to the Complainant’s cease and desist letter, adding that previous UDRP panels have repeatedly stated that, when respondents do not avail themselves of their rights to respond, it can be assumed that they have no rights or legitimate interests in the domain name concerned. The Complainant provides evidence showing that trademark searches performed on a global trademark searching platform against the Respondent’s name do not identify any rights in any country worldwide relating to the mark AIRY.
The Complainant asserts that it is implausible that the Respondent was unaware of the Complainant’s trademark when the Respondent registered the disputed domain name, adding that such mark can be found by simple searches on public databases and submitting that registration in bad faith can be found where a respondent knew or should have known of a complainant’s trademark rights and nevertheless registered the domain name concerned.
The Complainant contends that the Respondent, with actual or constructive awareness of the Complainant’s business and prior rights, registered the disputed domain name (a) primarily for the purpose of selling it to the Complainant or a competitor for profit, (b) to profit from advertising revenue generated when Internet users searching for information on the Complainant are diverted to the Respondent’s website, and/or (c) to prevent the Complainant from registering the disputed domain name.
The Complainant notes that its correspondence with the domain broker clearly indicates that the disputed name was available for sale, and asserts that this shows that the Respondent registered the disputed domain name primarily for the purpose of selling it. The Complainant submits that the domain broker attempted to hold the Complainant’s goodwill to ransom by demanding an excessive sum of USD 80,000, rising to USD 150,000 for the sale of the disputed domain name, being a price having no common relationship with documented out-of-pocket costs directly related thereto [the Panel notes that the Complainant provides these figures both as USD or EUR amounts in different parts of the Complaint although the correspondence appears to mention USD only].
The Complainant asserts that the redirection of the disputed domain name to another website demonstrates the illegitimacy of the Respondent’s interest therein and use in bad faith, adding that the Respondent is endeavoring to mislead Internet users into the belief that there is an association between the Complainant’s mark and the hotel booking services offered on the redirected site so that those searching for the Complainant will mistakenly reach the disputed domain name and be redirected to hotel booking related website unrelated to the Complainant whereby the Respondent will benefit commercially from traffic intended for the Complainant. The Complainant adds that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name thus further evidencing bad faith.
The Complainant notes the terms of the registrant underlying the privacy service in respect of the disputed domain name and contends that such registrant appeared after the disputed domain name had been offered for purchase to the Complainant by the Respondent’s domain broker and following upon the issuing of the Complainant’s cease and desist letter. The Complainant contends that this is suspicious and questions whether the Respondent was genuinely interested in the disputed domain name since it uses it for redirection purposes only. The Complainant concludes that this may be a fraudulent transfer which should be condemned by the Panel.
The Respondent requests that the Complaint be denied.
The Respondent submits that it acquired the disputed domain name in its capacity as Chief Technology Officer of Airy Nest, noting that this is a software technology company providing a budget accommodation and travel booking application in Indonesia. The Respondent states that this business began in 2015 using the domain name <airyrooms.com>, which was obtained for it by the Respondent, adding that the disputed domain name was acquired on August 4, 2017 for the sum of USD 150,000, being twice the amount which the broker had proposed to the Complainant, as part of an investment by Airy Nest’s major shareholder to support a move into the area of airline tickets and the development of a mobile travel booking application.
The Respondent notes that its business has worked with more than 2,000 properties, has managed 30,000 rooms and is already in 100 cities in Indonesia, provides a hotel operator network and a corporate travel management service, together with a basic hospitality training and service quality standard in cooperation with the Indonesian Ministry of Tourism (evidence provided). The Respondent asserts legitimate and continuous use of its business by way of a history of its operations, a page from “www.wikipedia.com” covering its Indonesian activities, signed contracts with budget hotel partners between 2015 and 2020, screenshots of the Respondent’s company’s verified social media account (first posting December 18, 2015, currently 151,000 followers), evidence of use of its mark in certain hotels, promotional materials featuring its mark and news coverage relating to its business and the Respondent’s position therein.
The Respondent says that the corresponding registrant changes were effected on October 10, 2017, being the last updated date on the WhoIs record for the disputed domain name and that a decision was later made to forward traffic from the disputed domain name to <airyrooms.com> as the booking platform was running well, adding that such redirection does not demonstrate any lack of rights or legitimate interests in the disputed domain name. The Respondent explains that it ignored the Complainant’s cease and desist notice because it was not accompanied by any power of attorney and submits that this is common practice in Indonesia, adding that such letter cannot be regarded as an attempt to settle this matter amicably as the Complainant contends. The Respondent also takes issue with the Complainant’s demands in such letter, submitting that the Respondent’s company is using the disputed domain name legitimately in connection with an established business and in accordance with its trademarks, which it says are famous to Indonesian citizens and travelers from neighboring countries.
The Respondent submits that the Complainant is engaged in Reverse Domain Name Hijacking and should have been aware of the Respondent’s business, notably because the Respondent’s company features on the Complainant’s own page on the website “www.linkedin.com” as a suggested similar page. The Respondent also provides profile details from said website indicating that the person handling the Complainant’s negotiations with the domain name broker was the Complainant’s Chief Executive. The Respondent adds that although its business has temporarily ceased trading due to the effect of the current Covid-19 pandemic on the travel industry, this does not have any impact on its rights and legitimate interests in the disputed domain name.
The Respondent notes that the word “airy” has several suggestive meanings relating to air, and indicates lightness and gracefulness, or places having a lot of light and space, adding that these connotations are relevant to the Respondent’s business. The Respondent provides evidence indicating that there are 346 registered trademarks for the term AIRY worldwide belonging to many different owners, which it says is due to these various meanings. The Respondent describes the registered trademarks in its business, dating at the earliest from 2015 and explaining that these have been used since the business commenced in that year, are held by the intellectual property holding company in its group and are used with its permission, asserting that the Complainant’s mark should not be held to be confusingly similar to the disputed domain name because the Parties’ respective trademarks relate to different classes of goods and services. The Respondent provides evidence indicating that the Complainant’s German trademark was in any event obtained by assignment from the original registrant on September 22, 2015, adding that the Complainant has not shown use of such mark by the previous owner and asserting that in these circumstances the Respondent’s mark is not derived from the Complainant’s mark.
The Respondent asserts that it registered the disputed domain name in good faith, without knowledge of the Complainant or its rights, in order to further its legitimate business in Indonesia, adding that the Complainant does not appear to hold any registered trademarks covering the territories in which the Respondent’s business is active and that the Respondent’s business is not a competitor of the Complainant. The Respondent contends that none of the non-exhaustive criteria for registration and use in bad faith under the Policy apply to it. The Respondent provides evidence of various Internet searches which it has performed, using a search engine which does not track the user’s identity or location, by virtue of which it contends that the Complainant’s products are either not marketed or are not available to purchase in Singapore or Indonesia. The Respondent also provides evidence indicating that 95.26% of visitors to the disputed domain name are from Indonesia, 4.74% from the United States of America and none from Europe in general or Germany in particular, asserting that this demonstrates that the Respondent was not interested in and has not benefitted unfairly from Internet traffic intended for the Complainant.
The Respondent denies that the disputed domain name was transferred after receipt of the Complainant’s cease and desist notice, pointing to the last updated date of the disputed domain name. The Respondent indicates its concern that a domain name broker was still writing to the Complainant about the disputed domain name after the Respondent had acquired it and provides evidence that it has sought clarification from said broker, which it indicates that it has not received. The Respondent asserts that the evidence does not suggest that the Respondent acquired the disputed domain name to sell it to the Complainant, noting that the Complainant first approached the broker to purchase it, that the Respondent then acquired it for value and in good faith and that it then used it in connection with a bona fide offering of goods and services. The Respondent submits that it is illogical to suggest that the Respondent acquired the disputed domain name with intent to sell it to the Complainant when the Respondent was willing to pay almost twice the amount in respect of which the disputed domain name was initially offered by the broker to the Complainant and in particular when the Complainant’s final bid of USD 5,000 was 0.3% of the price paid by the Respondent.
The Respondent indicates that it seeks a finding of Reverse Domain Name Hijacking because the Complainant should have identified the last updated date on the WhoIs record of the disputed domain name, the Respondent has a legitimate business bearing the use of the AIRY trademark, and such business has the right to use AIRY trademarks which are easily identifiable from the WIPO Global Trademark Database. The Respondent adds that the Complainant should also have identified the existence of the Respondent’s business via the Complainant’s own page on “www.linkedin.com” and should have taken full account of the Center’s Notice of Registrant Information email by virtue of which the Respondent’s email address at <airyrooms.com> is disclosed. The Respondent also questions aspects of the Complainant’s evidence including the fact that the Complainant did not disclose that it acquired its German registered trademark by assignment in 2015 and that the first email which the Complainant produces with the broker appears to indicate that the Complainant had expressed prior interest in the disputed domain name. The Respondent concludes that the Complainant was unable to obtain the disputed domain name through its failure to meet the broker’s price and that it is attempting to use the Policy to harass the Respondent into surrendering it.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 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 Panel is content that the Complainant has rights in its AIRY registered trademark as described in the factual background section above. The fact that the German registered trademark described in the factual background section above was acquired by assignment is not relevant to the first element assessment under the Policy, given that the Complainant was the owner of this mark and others when it filed the Complaint. The question of identity or confusing similarity is typically resolved in cases under the Policy by examining the mark concerned along with the disputed domain name in a relatively straightforward side-by-side comparison. When this is done in the present case, it may be seen that the second level of the disputed domain name is alphanumerically identical to the Complainant’s AIRY trademark. The generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded in the comparison exercise under the first element assessment on the grounds that this is required for technical purposes only.
The Panel notes the Respondent’s argument that the Complainant’s mark cannot be considered similar to the disputed domain name because the latter is used in connection with dissimilar classes of goods and services from those in respect of which the Complainant’s mark was registered. This is not a relevant consideration for the first element assessment under the Policy, the intent behind which is to ensure that the Complainant has a bona fide basis for the Complaint (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). It may however be relevant to and will be considered in connection with the second and third element assessment below.
In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the present case, the Panel is satisfied that the Respondent has made out a compelling case that it has rights and legitimate interests in the disputed domain name in terms of paragraph 4(c)(i) of the Policy. It is clear from the substantial dated material before the Panel that the Respondent made demonstrable preparations to use and has subsequently used the disputed domain name in connection with a bona fide offering of goods and services before any notice to it of the present dispute. The activities of the Respondent’s group of companies from 2015 onwards appear to be entirely consistent with the building of a legitimate business under the AIRY mark focused upon travel and, specifically, accommodation management. This is well-supported by the Respondent’s evidence of applications for corresponding registered trademarks dating from October 2015 and the various examples of use which the Respondent has provided, together with the registration of <airyrooms.com> on September 4, 2015 and the evidence surrounding the ultimate acquisition of the disputed domain name on August 4, 2017. Furthermore, the Respondent has provided ample evidence that its business has been commonly known as “Airy”, “Airy Rooms”, and “Airy Indonesia” to a substantial body of social media followers, to the media and to its own supplier and customer base, all of which is broadly consistent with a finding of rights and legitimate interests along the lines of paragraph 4(c)(ii) of the Policy.
While the Complainant and the Respondent evidently dealt with the same firm of brokers in their separate attempts to acquire the disputed domain name, there is no reasonable indication on the present record that the Respondent knew of the Complainant’s existence or had any intent to target it or its trademark thereby. On the contrary, it appears to the Panel that both of the Parties registered their respective and co-existing AIRY trademarks entirely independently of one another, and that the Respondent also acquired the disputed domain name, all based on the suggestive nature of the dictionary word “airy”. Indeed, even had the Respondent itself offered the disputed domain name for sale to the Complainant at a substantial value, as the Complainant suggests that it did in 2019 via the broker’s renewed approach, the Panel considers that the Respondent would nevertheless be able to establish rights and legitimate interests in terms of the Policy on the strength of the fact that such term is a dictionary word of universal applicability with its own intrinsic worth as a domain name, given that there is no evidence that the Complainant or its rights were being specifically singled out in that process. In any event, the Respondent denies that it was behind the 2019 approach and provides correspondence showing that it has taken issue with the broker on this topic. The Panel accepts such denial as wholly consistent with the surrounding facts of this case.
In these circumstances, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complaint therefore fails.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
For the reasons already outlined above, the Panel does not consider that the Respondent registered or is using the disputed domain name in bad faith. The record shows that the disputed domain name was acquired in 2017 in connection with the legitimate business activities of the group of companies which employs the Respondent. The acquisition of the disputed domain name for a substantial value well in excess of that which the Complainant was prepared to pay and its use to forward to the Respondent’s company’s website at “www.airyrooms.com” is not suggestive of any abusive intent on the part of the Respondent. Indeed, the substantial evidence produced by the Respondent shows a history of the building of a business, from incorporation of trading vehicles, to the registration of domain names, to the application for, registration and promotion of trademarks, to the conclusion of agreements with suppliers and a Memorandum of Understanding with a public body, and ultimately to the commencement and carrying on of lawful trading activities. This is entirely consistent with a good faith motivation in connection with the acquisition and use of the disputed domain name.
The facts of the case do not suggest that in preparing for and carrying out the substantial commercial activity disclosed by the evidence the Respondent had any bad faith intent to target the rights of the Complainant. Indeed, the Complainant provides nothing to suggest that the Respondent was likely to even be aware of the Complainant or its rights other than raising the possibility that the Respondent may always have been the underlying registrant of the disputed domain name and thus has been attempting to sell it to the Complainant for a substantial value via one or other broker since 2015. The Panel has already noted in the preceding section that even if this had been the case, any investor in a dictionary word domain name with a variety of possible uses and a wide range of potential purchasers would have been entitled to put this forward for general sale and to offer it to the highest bidder, provided that in doing so it had no intent to target the specific rights of any potential purchaser. In any event, this particular scenario is excluded by the Respondent’s substantial evidence narrated above.
In all of these circumstances, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered and has been used in bad faith and the Complaint also fails on this ground.
D. Reverse Domain Name Hijacking
The Respondent has sought a finding of Reverse Domain Name Hijacking (“RDNH”) in the present case. The definition of RDNH in the Rules is “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration for the assessment regarding RDNH. In order to consider this in the present factually complex case, the Panel will therefore focus upon what the Complainant knew, should have known or reasonably believed, based on the information available to it at the time when it filed the Complaint, followed by the Amended Complaint. Certain aspects of the case which have since come to light were not apparent to the Complainant at that point. The Complainant could not have known that the Respondent had acquired the disputed domain name for USD 150,000 on August 4, 2017 or that the broker which approached the Complainant thereafter may not have been acting with the Respondent’s authority. In the Panel’s opinion, it would be wrong to assess the Complainant’s conduct on the basis of those matters revealed subsequently which could not have influenced its decision to file the Complaint and amended Complaint.
It is however reasonable to infer that the Complainant knew that the word “airy” was a dictionary word. The Complainant’s AIRY trademark appears to have been selected to reference the supply of pure air which certain of the Complainant’s plant pot products are said to provide. Furthermore, the Complaint is brought in the English language and it is reasonable to infer that those advising the Complainant are proficient in English and likewise are aware of the various dictionary meanings of “airy”. This fact alone, which was never addressed in the Complaint, should have put the Complainant on notice that the disputed domain name was likely to have an appeal and a value not only to the Complainant but to many other third parties, including as matters later turned out, the Respondent’s business. This also should have indicated to the Complainant that the broker’s activities were potentially consistent with good faith registration and use of the disputed domain name on the part of the Respondent or indeed previous registrants, if any. The offering of the disputed domain name for sale at a substantial price is in itself therefore evidentially neutral and, to have any prospects of success, the Complainant would require to provide some evidence of actual targeting of its rights in order to establish registration and use in bad faith.
The Complainant knew that the disputed domain name was created in 2003. The Complainant does not appear to have investigated the history of ownership of the disputed domain name and the Complaint is silent on that issue. On the contrary, the Complainant appears merely to have assumed that the disputed domain name remained in the hands of the original registrant which created it. That being the case, registration in bad faith would require to be established at that date if the Complaint were to succeed. Furthermore, the Complainant also knew that although its AIRY trademark was first registered in 1998, it had acquired this particular mark by assignment in 2015. The Complainant failed to disclose this circumstance and made no attempt to explain how or where its predecessor in title had used the mark, or, in particular, to discuss how it was being used when the disputed domain name was created in 2003. In all of these circumstances, it is not possible for the Panel to imagine how the Complainant could reasonably have believed that it was being targeted via the disputed domain name and that it would be able to prove registration in bad faith. The case has the appearance of what is popularly known as a “Plan B case” in that the Complainant only launched the Complaint after unsuccessfully attempting to acquire the disputed domain name at its own preferred price. In the Panel’s opinion, this points in the direction of a finding of RDNH.
Once the original Complaint was filed, certain matters were disclosed upon Registrar verification which should also form part of the RDNH analysis as these should have influenced the Complainant’s decision to continue with the administrative proceeding. The Respondent’s personal name was revealed together with its email contact details which used an address “@airyrooms.com”. This is significant information as it appears to indicate a link between the Respondent and the website to which the disputed domain name was pointed. Despite the fact that the Complainant alleges that the said redirection of the disputed domain name was in fact indicative of bad faith, the Complainant appears to have made no attempt to investigate this new information. Had it done so, it is perfectly reasonable to conclude that it would have become aware of the Respondent’s employment status and link with “www.airyrooms.com”. This should also have alerted the Complainant to the fact that the Respondent was affiliated with the business to which the disputed domain name forwarded traffic. Both of these items were sufficient to demonstrate to the Complainant that the Respondent was legitimately connected to a business which was using the disputed domain name in connection with a bona fide offering of goods and services.
Despite this new material being placed before it, the Complainant merely indicated that it declined to direct the Complaint against the Respondent, noting that it was content to proceed against the privacy service which was the registrant originally noted on the public WhoIs record. Incongruously, the Complainant then went on to refer to the newly disclosed Respondent in the amended Complaint. For example, the Complainant sought to rely upon the fact that it had not identified any registered trademarks owned by the Respondent personally. As the Response discloses, there was a wealth of trademarks owned by the Respondent’s employer which could easily have been identified had the Complainant noted the link between the Respondent and the business behind “www.airyrooms.com”. The Complainant also asserts that the Respondent was a fraudulent transferee of the disputed domain name and suggests that the disputed domain name was merely forwarding traffic to “www.airyrooms.com” as a pretext. There was no evidence to support such assertion and had the Complainant made proper investigations, it would have known that the allegation was baseless. The Complainant’s failure to undertake what would have been reasonably modest research into the Respondent’s identity and business activities demonstrates at best carelessness and, at worst, a willful disregard for the obligations placed upon it by the Policy. It should not be overlooked that the Complainant certified in both the Complaint and amended Complaint that the information contained therein was complete and accurate to the best of the Complainant’s knowledge.
The Panel accepts that the Respondent did not reply to the Complainant’s cease and desist notice and that the manner in which the disputed domain name is held may have been responsible for some confusion on the Complainant’s part, given that the Respondent chose to retain the disputed domain name in its personal name and behind a privacy service. That said, the Respondent is entitled to make such arrangements and these matters do not automatically indicate a lack of rights or legitimate interests, nor, in isolation, do they provide a basis for bringing the Complaint in the absence of any other indicia of registration and use in bad faith. The Panel acknowledges that had the broker not continued to target the Complainant as recently as 2019, apparently without the Respondent’s knowledge or authority, the Complainant might not have leapt to the assumptions it did. However, as noted above, even if the Respondent itself had been offering the disputed domain name for general sale, it would have been entitled to do so and in the present case this would not, in and of itself, have been evidence of a lack of rights or legitimate interests or of bad faith registration and use.
Fundamentally, the Complainant’s failure to consider the dictionary word nature of the disputed domain name, the history of the disputed domain name and the background to its acquisition of rights in the AIRY trademark caused it to overlook multiple weaknesses in its case. Thereafter, the Complainant’s failure to make reasonable investigations as to the nature of the Respondent’s identity and business activities resulted in it failing to appreciate the nature of the Respondent’s rights and legitimate interests in the disputed domain name. These failures are all the more concerning given that the Complainant is represented by legal counsel.
The Panel concludes that this is a Complaint which was destined to fail and should never have been brought. In these circumstances, it is particularly regrettable that the Complainant’s actions have caused the Respondent to invest considerable time and resources in preparing and submitting a substantial Response at a time when, as it notes, it is also having to deal with the sudden detrimental effect of the current global pandemic upon its business.
The Panel upholds the request for a finding of RDNH and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: July 3, 2020