WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Croner Company v. DVLPMNT MARKETING, INC.
Case No. D2020-2446
1. The Parties
The Complainant is The Croner Company, United States of America (“United States”), represented internally.
The Respondent is DVLPMNT MARKETING, INC., Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <croner.com> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 24, 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 amendment to the Complaint on September 24, 2020.
The Center verified that the Complaint together with the amendment to 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 October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020.
The Center received an email from a law firm on October 27, 2020, attaching a document entitled “Suggestion of Bankruptcy”. The Complainant raised a query regarding this communication by email of October 27, 2020. The Center acknowledged receipt of both communications on October 29, 2020. The law firm sent a further communication on October 29, 2020. This matter is addressed in detail in section 6.A below.
The Center appointed Adam Taylor as the sole panelist in this matter on November 3, 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
For over 40 years, the Complainant has traded under the name “The Croner Company”, offering remuneration consultancy and survey services to companies in various industries. The Complainant’s clients include well-known companies such as Viacom/CBS, Walt Disney Studios, Apple Computers, Microsoft, and Comcast.
The Complainant registered <croner.biz> in 2001 and has used it for a website since then.
The disputed domain name bears a creation date of May 1, 1996.
As of September 11, 2020, the disputed domain name resolved to a parking page with an invitation to buy the disputed domain name for USD 24,150 as well as pay per click (“PPC”) links comprising “Employment Contract”, “Employment Law”, “Employment”, “Walters Kluwer” and “Top Affordable Home Security Systems”.
5. Parties’ Contentions
The Complainant has established common law trade mark rights in its name arising from its continuous use since 1978. The Complainant is named for its founder, Mel Croner.
The Complainant is routinely referred to informally as “Croner”, both within the Complainant and amongst its clients. The word “croner” is not a common word in English or any other language.
To the best of the Complainant’s knowledge, the Complainant is the only entity in the United States using a name that incorporates the family name “Croner”. There is an unaffiliated entity called “Croner” in the United Kingdom.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The disputed domain name has never been used for any entity named “Croner”, nor for any legitimate business purpose. The Complainant has made frequent investigations into the availability of the disputed domain name since 2001 including numerous visits to the website at the disputed domain name, which has never been used to market or represent any entity called “Croner”.
None of the PPC links on the website at the disputed domain name relate in any way to an entity or person named “Croner”. The site appears to exist solely to attract entities who would want to buy the disputed domain name.
There is no evidence that the Respondent has any relationship with the name “Croner” other than to offer the disputed domain name for sale.
The disputed domain name was registered and is being used in bad faith.
The Complainant has made low but reasonable offers for the disputed domain name since 2001, including USD 2,995 on June 7, 2020, and USD 500 on September 8, 2020, but has never received a response. The asking price for the disputed domain name increased from some USD 12,000 around a year ago as a direct result of the interest expressed by the Complainant.
The Respondent has been found to have registered and used domain names in bad faith in at least 12 prior UDRP cases. These demonstrate that the Respondent is a serial cyber-squatter and has engaged in a pattern of bad faith conduct in accordance with paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Court Proceedings
In October 27, 2020, Fox Rothschild LLP, acting as “Attorneys for the Chapter 7 Trustee”, emailed a document entitled “Suggestion of Bankruptcy” (“the Notice”) to the Center. The Notice asserted that, on November 11, 2019, a company named The Producers, Inc, had stipulated to entry of an Order for Relief under Chapter 7 of Title 11 of the United States Bankruptcy Code by the United States Bankruptcy Court for the Middle District of Florida (Tampa Division) and that an Order for Relief was entered by the court on December 3, 2019 (“the Order”). The Notice further claimed that, from the date of filing of the bankruptcy petition on September 12, 2019, an automatic stay took effect and that it applied to this UDRP proceeding and to the disputed domain name in accordance with section 362 of the Bankruptcy Code which, amongst other things, prohibited the commencement or continuation of an administrative process against the debtor that was or could have been commenced before the commencement of the bankruptcy case as well as any act to obtain possession of property of or from “the estate” or to exercise control over property of the estate. Finally, the Notice issued a warning against continuing with this (UDRP) proceeding or dealing with the estate’s property as set out above, which was said to include the disputed domain name.
The Order, which was attached to the Notice, was headed “In re The Producers, Inc, Debtor”. The Order made various specific orders against “the Debtor” in connection with the bankruptcy including a requirement to serve notice of the case on all debtors. The Order made no mention of the disputed domain name or of any specific property of the Debtor.
Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings.
However, panels are generally reluctant to suspend UDRP cases due to concurrent court proceedings, mainly because of the potential for indeterminate delay – see section 4.14.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
See also section 4.14.5 of WIPO Overview 3.0 to the effect that in certain scenarios, including receivership cases, panels generally render a UDRP decision rather than terminate or suspend the proceedings but that implementation of such UDRP decision may be deferred pending the ultimate disposition of such receivership action.
In this case, the request to suspend the proceeding is based on an automatic stay which allegedly applies to this UDRP proceeding and the disputed domain name as a consequence of bankruptcy proceedings against a company named “The Producers, Inc.”. However, the registrant of the disputed domain name according to the Registrar, and the Respondent in this proceeding, is “Dvlpmnt Marketing, Inc”. The Notice does not address the connection, if any between the two companies; nor does it establish any other link between the debtor named in the bankruptcy proceedings and the disputed domain name. Furthermore, the Notice does not explain why section 362 of the Bankruptcy Code is applicable to this UDRP proceeding, which is not specifically a United States process.
For the above reasons, the Panel has decided not to suspend this proceeding and to proceed to a decision.
In any case, UDRP panel decisions are not binding on the court. As explained in section 4.14 of WIPO Overview 3.0, paragraph 4(k) of the Policy preserves parties’ court options before, during, and after a UDRP proceeding.
In accordance with paragraph 4(k) of the Policy, the Registrar will not implement this decision if, during the period of ten business days after the Registrar is informed of the Panel’s decision, the Respondent supplies official documentation indicating that the Respondent has commenced a lawsuit against the Complainant in the jurisdiction to which the Complainant has submitted in the Complaint. It is therefore open to the Respondent, acting through a trustee in bankruptcy if applicable, and if permitted, to stop transfer of the disputed domain name to the Complainant by starting a lawsuit in the relevant jurisdiction and providing notice thereof in line with paragraph 4(k).
B. Identical or Confusingly Similar
The Complainant has established unregistered rights in the mark “The Croner Company” by virtue of its long-standing trading activities under that name.
Section 1.7 of WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The dominant element of the Complainant’s trade mark is the word “Croner”, which is identical to the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the only evidence of use of the disputed domain name consists of a parking page with PPC links dominated by employment-related services. These are, at the very least, related to the kind of services offered by the Complainant, namely consultancy regarding employee remuneration. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0 , which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel has little difficulty in concluding that the disputed domain name was registered and is being used in bad faith.
First, the Complainant’s use of its distinctive name long predates the creation date of the disputed domain name.
Second, the Respondent has used the disputed domain name for a parking page with PPC links to services relating to the Complainant’s industry.
Third, the Respondent has not come forward to deny the Complainant’s assertions of bad faith or to put forward any legitimate reason for its selection of the disputed domain name.
Fourth, the Respondent is a serial cyber-squatter, having been found to have registered and used domain names in bad faith in at least 12 previous UDRP cases. See, e.g., including Tyson Foods, Inc. v. Domain Administrator, Dvlpmnt Marketing, Inc., WIPO Case No. D2017-0319.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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, <croner.com> be transferred to the Complainant.
Date: November 17, 2020