WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jordi Vilanova v. Domain Admin / This Domain is For Sale, HugeDomains.com
Case No. D2020-2891
1. The Parties
The Complainant is Jordi Vilanova, Spain, represented by Mapa Trademarks SL, Spain.
The Respondent is Domain Admin / This Domain is For Sale, HugeDomains.com, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <cloudtango.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2020, 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 November 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. The Response was filed with the Center November 23, 2020. On November 29, 2020, the Complainant filed a supplemental filing to which the Respondent responded on November 30, 2020.
The Center appointed Warwick A. Rothnie, Lorelei Ritchie and The Hon Neil Brown Q.C. as panelists in this matter on December 29, 2020. The Panel finds that it was properly constituted. Each member of 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 disputed domain name was first registered in 2011 by Cloudtango Ltd. Cloudtango Ltd was an IT consulting firm based in London in the United Kingdom, unrelated to either party. Cloudtango Ltd was dissolved and ceased to exist on July 7, 2015.
Prior to the dissolution of Cloudtango Ltd on July 7, 2015, however, the disputed domain name was transferred to the Respondent on May 3, 2015.
Since May 5, 2015, the Respondent has publicly listed the disputed domain name for sale.
On July 9, 2015, the Complainant registered the domain name <cloudtango.org>. According to the Complaint, the domain name has resolved to a website since September 30, 2015. Since then, the Complainant has used the domain name, and a trademark “CLOUDTANGO” to create a directory of and provide awards to managed services providers. Initially, this was conducted as a not-for-profit project. Its operations have expanded sufficiently, however, to develop into a business.
In connection with these services, in July 2015 the Complainant also established a Twitter account under the name “Cloudtango” using the Twitter handle “@cloud_tango”. It appears from the account’s page on Twitter.com that the first “tweet” using this account was made on April 11, 2019.
The Complainant is the owner of a European Union Trade Mark (“EUTM”) No. 018128777, CLOUDTANGO, in respect of a range of relevant services in International Classes 35 and 42. The Complainant applied to register this trademark on September 25, 2019. It was formally registered on October 26, 2020.
The Complainant has also applied to register the trademark CLOUDTANGO in the United States in International Class 35. This application was filed on August 27, 2020 and is still pending. The application claims that the trademark was first used in commerce on September 30, 2015.
In March 2016, the Respondent was asking USD 2,220 for the disputed domain name. In July 2017, the Respondent was asking for USD 3,490. Currently, the Respondent advertises the disputed domain name for sale for USD 8,995.
It is not in dispute that the Respondent is a domain name reseller. Its portfolio includes over 2,000 domain names which start with “cloud” and which are unrelated to the Complainant’s business. Its portfolio also includes over 200 domain names which end with “tango” and which are also unrelated to the Complainant’s business. The Complainant has also provided evidence that the Respondent holds numerous domain names which start with terms that could be trademarks of well-known companies such as Amazon (including for example JeffAmazon.com) and Apple.
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 directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
As noted above, the Complainant has submitted an unsolicited supplemental filing. The Rules provide for supplemental filings only at the Panel’s request, although unsolicited supplemental filings may be accepted in the Panel’s discretion. The Respondent has objected to the Complainant’s supplemental filing and requested an opportunity to submit a supplemental response if it is admitted. That is unnecessary in the circumstances of this case as the Complainant’s proposed supplemental filing does not affect the outcome for the reasons discussed below.
A. 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.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical with or confusingly similar to the trademark.
The Complainant has proven ownership of the EUTM, a registered trademark for CLOUDTANGO. As a pending application only, the Complainant’s trademark application in the United States does not qualify by itself for this purpose under the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4. The EUTM, however, is sufficient for this requirement under the Policy.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademark. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.
In undertaking the comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, therefore, the disputed domain name consists of the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. 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.
The onus of proving this requirement, like each element, falls on the Complainant. 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. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy provides examples of some circumstances which may be situations in which the Respondent has rights or legitimate interests in a disputed domain name. 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.
In the present case, the Complainant relies on the decision in Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 which the Complainant contends held a respondent would not have rights or legitimate interests in a domain name where:
“(i) it is not a licensee of Complainant, nor has it received any permission or consent to use Complainant’s trademark; (ii) Complainant has prior rights in that trademark which precedes Respondent’s registration of its domain name; and (iii) Respondent is not commonly known by the trademark.”
It is not in dispute between the parties that the Respondent in the present case is not licensed or otherwise associated with the Complainant in any way. Nor is the Respondent commonly known by the name embodied in the disputed domain name.
However, the Complainant has addressed only two of the three requirements which the panel in the Charles Jourdan Holding AG v. AAIM, supra, case referred to. The Complainant has not addressed the third requirement: that the Complainant has prior rights in the trademark which precede the Respondent’s registration of the disputed domain name.
As discussed in Section 5C below, the Respondent registered the disputed domain name some two months before the Complainant adopted as his trademark “CLOUDTANGO” by registering that term as the domain name, <cloudtango.org>. The Panel considers this fact is decisive in the present case.
C. 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.
In the present case, the Complainant points out that the Respondent has not used the disputed domain name for any purpose other than to offer it for sale and, further, that the price sought by the Respondent has been increasing over time. The Complainant notes that the price currently sought is four times the price initially sought and contends that price reflects appreciation of the significance of the disputed domain name as the Complainant’s trademark. The Complainant also points out that the Respondent is a domain name reseller which has been found in several proceedings prior to this proceeding to have registered and used other domain names in bad faith. The Complainant also points out that the Respondent has many other domain names in its portfolio which could well have been registered and used in bad faith in the face of other persons’ trademarks. The Complainant contends therefore that “it is sensible to conclude that the Respondent registered and has been using the disputed domain in bad faith, with the only aim of speculation”.
However, the Respondent registered the disputed domain name some two months before the Complainant even registered the domain name <cloudtango.org> and adopted the trademark “CLOUDTANGO”. In such circumstances, a respondent will not normally be found to have acted in bad faith under the Policy. See WIPO Overview 3.0, section 3.8.1.
There are exceptions to that approach. WIPO Overview 3.0, section 3.8.2 identifies some such situations. There is no suggestion in any of the evidence in the present case, however, that the Respondent was in any way associated with the Complainant or had any awareness of the Complainant’s plans to adopt the trademark. This is not a case of “drop catching” of the kind discussed in for example Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540. Even if the Respondent had been put on inquiry as in such cases, however, on the record in this case the Respondent would not have been able to discover the Complainant and his trademark.
It cannot be said on the record in this case, therefore, that in registering the disputed domain name the Respondent was seeking to capitalise opportunistically on the Complainant’s plans or nascent trademark rights. Accordingly, the circumstance outlined in WIPO Overview 3.0, section 3.8.2 do not apply.
As the Complainant has not established that the disputed domain name was registered in bad faith, the Complaint must fail.
D. Reverse Domain Name Hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that a Complaint has failed is not in itself sufficient to warrant a finding of reverse domain name hijacking.
In the present case, however, the disputed domain name was registered by the Respondent two months before the Complainant adopted its trademark and registered the domain name <cloudtango.org>.
It has been clearly established that a complaint in such circumstances must fail unless the complainant can show the respondent has somehow opportunistically taken advantage of the complainant’s plans to adopt a trademark which the domain name in question resembles.
It has also been clearly established under the Policy for many years now that a complainant must prove both registration in bad faith and use of the domain name in bad faith.
The Complaint does not attempt to address either of these matters. The Complainant’s supplemental filing made after the Response was filed still did not attempt to address these matters.
Accordingly, the majority of the Panel considers it appropriate to find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding under paragraph 15(e) of the Rules.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
The Honourable Neil Anthony Brown QC
Date: January 12, 2021
Concurring Opinion but Dissent on the issue of Reverse Domain Name Hijacking
I concur in the decision of the majority in denying the Complaint. While Complainant has established that the disputed domain name is identical to Complainant’s trademark for purposes of satisfying the first UDRP element, Complainant is not able to prevail on the second and third elements, in particular, due to the apparent registration by Respondent of the disputed domain name before Complainant’s first use or established rights in its own mark. Therefore, I concur in denying the Complaint.
I do not agree, however, with the majority’s finding of Reverse Domain Name Hijacking by Complainant. As the majority observes, a panel’s decision to deny a complaint is not, by itself, sufficient to establish Reverse Domain Name Hijacking. Rather, a complainant should feel free to initiate a UDRP complaint where the complainant has an honest and good faith belief that it is able to establish the necessary elements.
Unlike the more egregious examples contemplated by paragraph 15(e) of the Rules, there is no indication that Complainant in this proceeding acted in bad faith or primarily to harass Respondent. Rather, it appears that Complainant held an honest and good faith belief in Complainant’s ability to establish the necessary elements. Under these circumstances, I would not make a finding of Reverse Domain Name Hijacking.
Date: January 12, 2021
Concurring Opinion On Rights And Legitimate Interests, Bad Faith And Reverse Domain Name Hijacking
This panelist agrees with the conclusions of the other panelists on the major issues but would like to express his reasons in his own words. He also joins the Chair of the Panel in making a majority to find Reverse Domain Name Hijacking but again would like to express his reasons for doing so in his own words.
Rights and Legitimate Interests (RLI)
The Respondent has a right and a legitimate interest in the disputed domain name for several obvious reasons. Each of those reasons shows the flimsy basis on which the claim has been brought and which should have been a warning light to the Complainant against bringing the claim at all.
First, the Respondent registered the domain name by acquiring it at auction from the previous owner. There was nothing untoward about that purchase and it was clearly a regular transaction. The unchallenged evidence is that the Respondent is in the business of buying and selling domain names and it obviously bought the domain name as part of its business, which adds legitimacy to the Respondent’s acquisition of the domain name, a legitimacy that has been widely recognised. More to the point, there was no trademark interest that stood in its way of the Respondent’s acquiring the domain name and which might have prevented the Respondent from buying it. Buying the domain name did not run counter to the interests of any trademark owner who held a trademark for CLOUDTANGO as there were none. The purchase took place on May 3, 2015 and as at that date, there was no trademark for CLOUDTANGO. It was not for a further 4 years that the Complainant developed an interest in having a trademark for CLOUDTANGO. That interest was made manifest by applying to register an EU trademark for that expression on October 1, 2019. So, not only did the Respondent acquire its right and interest in the domain name by buying it on the open market at an auction in which the Complainant could have taken part but did not, but its entitlement grew with the passing years during which no challenge was made to its holding the domain name. Indeed, it is also clear from the evidence that the Complainant did not use the expression “Cloudtango” at the time the Respondent registered the domain name. We know that, because when the Complainant made a further application for a trademark, this time to the USPTO on August 27, 2020, it said that it had a first use and first use in commerce of the term of September 30, 2015, meaning that the Complainant had not used the expression in any business until 5 months after the Respondent registered the disputed domain name. Indeed, that period is probably much longer, as the Respondent’s attorney has unearthed the interesting fact that, according to the Complainant himself, as noted on his Twitter account, he has been the founder and CEO of “Cloudtango” since April 2019, and not July 2015. On that basis, the Complainant was not using the expression “Cloudtango” for business at the time when the domain name was acquired, and did not use it for business until 4 years after the domain name was registered. The totality of the evidence therefore shows that at the time of the registration of the domain name and for some time thereafter there was no trademark or other intellectual property right that negated or limited the Respondent’s right to register domain name. To re-iterate the point, which goes to the essence of this proceeding, the Respondent acquired the domain name on May 3, 2015. The Complainant did not have a trademark for CLOUDTANGO at that date. It did not apply for one until 1 October 2019. It did not acquire one until October 26, 2020. It was not in business as “Cloudtango” when the Respondent acquired the domain name or, according to the Complainant’s Twitter account, until April 2019. These facts were known to the Complainant when it filed the Complaint. Yet it asserted that the Respondent had no right to the domain name and no legitimate interest in it, both hopeless contentions which the Complainant should not have made and which it must have known were untrue.
Before leaving this issue, it should also be said that the Complainant relies on the fact that it, also, has a domain name that uses the expression “Cloudtango”, namely <cloudtango.org>, registered on July 9, 2015. It may be relying on that domain name to establish a common law trademark but in any event it seems to be an important part of the Complainant’s case. However, it is apparent that by the time this domain name, <cloudtango.org>, was registered, the Respondent had owned the disputed domain name, <cloudtango.com> for 2 months, at a time when the Complainant was not in business under the name “Cloudtango”. When the Complainant decided to apply for a US trademark on August 27, 2020, it claimed a first use and first use in commerce of September 30, 2015, 4 months after the disputed domain name had been registered. Indeed, the Complainant himself says that he founded “Cloudtango” in April 2019, much later. Accordingly, even if there is some trademark interest established by the <cloudtango.org> domain name, it could only have arisen subsequent to the registration of the disputed domain name.
The second reason why the Respondent has an RLI in the disputed domain name is that it consists of two generic and common words which were available to the entire world and open to the Respondent to have in a domain name, provided it did not engage in targeting of a trademark or its owner or engage in any untoward or unfair conduct, like passing off or phishing. There is no evidence to suggest that any such conduct occurred. Moreover, buying and selling such domain names has been held many times to be a legitimate business, a conclusion re-inforced in the present case by the fact that the Respondent holds a stock of domain names that incorporate the words “cloud” and “tango” in them, such as <cloudtechno.com> and <soultango.com>. The evidence is that many of these names pre-date the time when the Complainant started in business, showing that the Respondent was not targeting or preying on the Complainant, whom the evidence also shows was unknown to the Respondent before this Complaint.
The foregoing matters show that the Respondent was using the domain name in connection with a bona fide offering of goods and services, within the meaning of paragraph 4 (c)(i) of the Policy, thus giving it a right or legitimate interest in the domain name. Indeed, there are prior panel decisions to that effect relating specifically to the Respondent as a party in UDRP proceedings.
In general terms, the onus is on the Complainant to show that the Respondent has no right or legitimate interest in the domain name. However, no evidence at all has been adduced to that effect and, indeed, little effort seems to have been put into trying to establish it. Rather, the Complainant’s own evidence shows that the Respondent registered the domain name 2 months before the Complainant registered its own <cloudtango.org> domain name, 4 years before the Complainant’s EU trademark was applied for and, if the Complainant is to be believed, that he founded Cloudtango in April 2019, 4 years before that business was established.
The Respondent therefore clearly succeeds on the second element of the Policy.
The whole of the Complainant’s case shows that there was neither bad faith registration nor use. No case has been shown that the Respondent was in breach of the criteria for bad faith set out in the Policy. None of the usual shortcomings alleged against respondents is present. Indeed, the Complainant’s case really shows that the Respondent was acting in good faith in registering and using the domain name. As is becoming disturbingly more frequent in this jurisdiction, the Complainant relies, it seems exclusively, on prior UDRP decisions which are undefended or irrelevant or both. Of particular concern is the misleading use made of the decision in Austin Pain Association v. Huge Domains.com, FA1536356 (Forum, March 18,2014), where the Complainant omitted that, after the UDRP proceeding, the matter as taken to court, resulting in a reversal of fortune and the payment of USD 25,000 to Huge Domains because of the bad faith UDRP proceedings that had been brought against it. This, and other attempts to denigrate the Respondent, have failed and should not have been made, being a strong ground for a finding of Reverse Domain Name Hijacking, as will shortly be seen.
Clearly the bad faith ground must fail, as the domain name was registered more than 4 years before the Complainant even applied for its trademark. Unless the Respondent were a clairvoyant, it could have no way of knowing that the Complainant or any other party would or might decide to go into business and apply for a trademark consisting of the same expression as the domain name it was then acquiring. There was therefore nothing to which any alleged bad faith could be directed. Such a situation has negated any finding of bad faith in almost countless prior cases and it must be the result in the present case.
The only specific ground relied on by the Complainant is that the domain name is for sale and that the price has been increased. The Complainant seems to think, wrongly, that the Respondent has no right to sell its own property. The Policy makes it very clear that bad faith arises only where the registrant intended to sell the domain name to the complainant or a competitor, which is not the case here. If it is to be said that other facts and circumstances might show that an offer to sell to other parties in general may constitute bad faith, then those facts and circumstances must be made out and no attempt has been made to do so in the present case. The Complainant contents itself by alleging that the Respondent has been motivated by one thing, “the only aim of speculation”.
Reverse Domain Name Hijacking (RDNH)
Some reasons for the finding of RDNH have already been given and this panelist agrees with that view, while making the following additional points.
If costs were available in this jurisdiction there would have been a finding that the Complainant should pay all of the Respondent’s costs on an indemnity basis, that is, all of its costs actually incurred. However, costs may not be awarded against a complainant in domain name proceedings, with the commendable exception of the Canadian system for .ca domain names, where the panel may order an offending complainant to pay up to USD 5,000 towards the winning respondent’s costs.1 In the absence of such a power under the UDRP, the only way that a panel can express its disapproval of complainant’s case is to make a finding of RDNH against it in an appropriate case. Contrary to some opinions, this panelist will make a finding of RDNH only in a proceeding where the respondent has made a strong case for doing so. The present is one is such case, as the Respondent’s counsel has made out a very strong case for a finding of RDNH.
This panelist would make the finding of RDNH, initially for two reasons. First, the Complainant was represented by an organization that claims to be an expert not only on intellectual property in general but domain names in particular. That being so, the panel holds the complainant to a higher standard than if it were not represented. It is not clear if the authorized representative is a law firm, but it states on its website that it gives “aviso legal”. In any event, if it represents a party in these proceedings the Panel is entitled to expect an accurate and complete presentation of a rational case that is at least arguable. The Panel did not receive such a submission from the Complainant on this occasion. Thus, this panelist adopts the words of the panel in Adopts Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555: “The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable.”
Secondly, this panelist is not satisfied that the Complainant has been open and honest with the Panel. In particular, it is concerned at the use that the Complainant made of the decision in Austin Pain Association v. Huge Domains.com, FA1536356 (Forum, March 18, 2014) where, due only to the research done by the Respondent’s counsel, it transpires that the Respondent may have had a Pyrrhic loss in the UDRP proceedings, but it was successful in subsequent court proceedings which resulted in the Respondent being paid USD 25,000 as reparation for the unmeritorious case brought against it.
In any event, the Complainant’s case in the present proceeding was baseless and should and must have been known to be so by the Complainant and its representative before it launched the proceeding. Parties should realize that losing a case will not by itself result in a finding of RDNH being made, but presenting a case that is so bad that it clearly should not have been brought and that must have been known to be of that character by any reasonable observer, may well result in such a finding being made. The present case is one such case and in no sense by a small margin.
There is also a lot to be said for the point made by the Respondent’s counsel to the effect that if a finding of RDNH is not made in cases such as the present, unmeritorious and unfair claims will be made to harass legitimate registrants of domain names to try to force them to surrender their domain names. This panelist would add to that submission that if a finding of RDNH were not made in the present case then such a finding would never be made.
This panelist would therefore make the finding of RDNH.
The Honourable Neil Anthony Brown QC
Date: January 12, 2021