WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GS1 AISBL v. WhoisGuard Inc. / Elmer Robles
Case No. D2020-3037
1. The Parties
The Complainant is GS1 AISBL, Belgium, represented by Osborne Clarke scrl, Belgium.
The Respondent is WhoisGuard Inc., Panama / Elmer Robles, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <gs1.online> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 November 18, 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 November 20, 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 December 3, 2020. In accordance with the Rules, paragraph 5, the original due date for Response was December 23, 2020. On December 21, 2020, the Respondent requested an extension of the due date for the Response. The due date for Response was extended to December 27, 2020. The Respondent submitted a response on December 27, 2020. The Complainant made an unsolicited supplemental filing on January 5, 2021. The Respondent made an unsolicited supplemental filing on January 7, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 6, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is an international standards organization with member organizations in countries around the world. It manages supply chain standards, including the barcode standard and “GS1 Digital Link”, a new standard that allows physical products to connect to the web. The Complainant is the registered proprietor of International trademark registrations number 850909 for GS1, and number 850908 for a figurative mark including the alphanumeric characters “GS1”. Both trademarks were registered on April 26, 2005, designating multiple jurisdictions, including the United States, and specifying goods and services in classes 16, 41, and 42, including the development, regulation and distribution of certain types of standards. Both trademark registrations remain current. The Complainant has also registered domain names incorporating “gs1”, including <gs1.org>, registered on May 31, 2003, that it uses in connection with a website where it provides information about itself and its activities, and <gs1.com>, registered on June 11, 2001, that redirects to “www.gs1.org”. Each of the Complainant’s member organizations has a website associated with a domain name that incorporates the alphanumeric characters “gs1”.
The Respondent is an individual resident in the United States.
The disputed domain name was registered on September 10, 2020. At the time of filing of the Complaint, it resolved to a webpage that prominently displayed the words “GS1 Digital Link Analytics as a Service”. At the time of this decision, the disputed domain name resolves to a webpage for GetSimple One, which is described as an online tracking site for GetSimple One Page Websites and Single Page Applications that rely on decentralized storage providers.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s wordmark GS1. A domain name is identical to a trademark where the text “to the left of the dot” exactly reproduces the trademark. The cancellation of the Complainant’s trademarks is not within the powers of the Panel and therefore unrelated to these proceedings. In addition, the Complainant’s trademarks are distinctive towards the public concerned, consisting of professional users, and having been put to intensive use for decades not only by the Complainant but also by the national member organizations of GS1.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks. The Respondent has failed to make an active use of the disputed domain name. “GS1” is an invented word and, as such, is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The present case is not about the development of source code. The Respondent is trying to sow confusion by referring to the GS1 Digital Link Documents and Source Code on GitHub under the Apache 2.0 License. That being said, the Apache 2.0 License, in particular section 6, prohibits any use of the Complainant’s trademarks, except in a limited number of cases which are not applicable in the present case. Regardless of the fact that the Respondent did not reach out to the Complainant to ask whether it would be admissible to use the Complainant’s trademarks as a URL, the use of the GS1 trademarks in the disputed domain name is clearly for marketing purposes only as it does not serve any engineering purpose. The Respondent fails to demonstrate a genuine need to use the GS1 trademarks for objective and good reasons such as technical interoperability, in respect of which the use of the trademarks as a URL is totally irrelevant.
The disputed domain name was registered and is being used in bad faith. It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant at the time of registration of the disputed domain name. The Complainant’s trademark has a strong reputation and is widely known. The Respondent has taken active steps to conceal his true identity through the use of a proxy service and provided false contact details. It is not possible to conceive of any plausible active use of the disputed domain name by the Respondent that would not be illegitimate. The Respondent’s alleged intention to implement the GS1 Digital Link across industries is totally unproven and, in any event, such implementation does not require the registration of a URL that infringes upon the trademark rights of the Complainant. The disputed domain name resolved to an inactive website when the Complaint was filed, i.e., the Respondent did not actively use the disputed domain name and failed to provide any identity or contact details on the website. The Complainant has made numerous efforts to acquire the GS1 abbreviation in Top-Level Domains (“TLDs”); many are held by its member organisations, thus, with its consent. The Respondent appears to have registered the disputed domain name on different occasions, thereby preventing the Complainant from registering it.
The Respondent recognizes that the Complainant is the holder of the International registration for the figurative mark GS1, but the Respondent is not using that mark. The Respondent recognizes that the Complainant is the holder of an International registration for the wordmark GS1 but, as an English abbreviation or acronym of the description “global standards one”, it should have been refused registration on absolute grounds according to both the European Union Intellectual Property Office (“EUIPO”) guidelines and United States Patent and Trademark Office (“USPTO”) procedures. The wordmark has not acquired distinctiveness. The wordmark is descriptive of the Complainant’s services which are to establish “one set of global standards”. The Respondent agrees with the Complainant that the question of the trademark’s legitimacy is beyond the powers of the Panel. The Complainant covets the entirety of the disputed domain name comprising the “gs1” to the left of the dot and the “.online” TLD suffix. If the Complainant truly had rights to, or interests in, all domain names incorporating “gs1”, then it should have been successful in acquiring “gs1” in the “.net”, “.biz”, and “.info” legacy TLDs, but it has not acquired them. In the same way that <gs1.biz> is owned by a GS1 member organization, the disputed domain name was previously owned by a GS1 member organization and registered by its then software development manager until January 2020.
The Respondent has rights or legitimate interests in respect of the disputed domain name. The Complainant’s associates have published the GS1 Digital Link documents and source code on GitHub under the Apache 2.0 license, which allows software developers and solution providers to modify, distribute, sublicense, and commercialize the GS1 Digital Link source code. The Respondent’s use of “gs1” in the disputed domain name comes from the code examples themselves, especially when referring to GS1 resolvers. It would be entirely misleading when reading the source code if a GS1 resolver was not allowed to use “gs1” in the disputed domain name due to trademark infringement. The Respondent is using subdomains to the left of the disputed domain name that represent parties in a digital supply chain and are the hashed identities of registered company names and identifiers. Since these hashes are not generally published outside of the supply chain, neither the Complainant nor any other entity outside the supply chain should be able to discover the parties or the transactions between them and therefore the website should appear to be “inactive” to unauthorized third parties. The Respondent is actively using the disputed domain name as a resolver as directed by the GS1 Digital Link source code made available by the Complainant’s associates. The Respondent has modified the source code to capture analytical data as well as record the order and transaction on an immutable distributed ledger. The Apache 2.0 license gives the Respondent rights and legitimate interests in using “gs1” in the name of the resolver. The Respondent is not using “gs1” to confuse the public or other software developers, but rather to indicate that the disputed domain name is in fact a GS1 resolver. Putting the party and supply chain names after “gs1” would cause increased complexity in the resolver and statistics aggregation code and is therefore not a feasible architecture to implement.
The Complainant released the GS1 Digital Link source code to allow widespread adoption and commercialization of the GS1 Digital Link format, prior to securing domain names based on its descriptive and therefore invalid wordmark registration. The Complainant should not be allowed to unilaterally claim ownership of domain names that could rightfully be used by its member organizations and solution providers; especially after releasing source code that shows the “gs1” being used in the URL of GS1 resolvers. The source code utilizes the “gs1” string in the base URL of the GS1 Digital Link. The use of the “gs1” is clearly there to indicate that the URL follows the GS1 Digital Link format. If the Complainant is successful in suppressing the use of the “gs1” in URLs that are supposed to be conformant to the GS1 Digital Link format then it would be impossible for developers to communicate to other developers the intention of their source code. This is illogical from an engineering standpoint and antithetical to basic open-source programming principles. As a GS1 solution provider to a GS1 member organization, the Respondent registered the domain name in order to provide “GS1 Digital Link Analytics as a Service” under the Apache 2.0 license. The Complainant wants the Respondent to further disclose its business relationships as a GS1 solution provider as proof of legitimacy. The Respondent’s enhancements to the GS1 Digital Link source code are currently in beta testing and as such the disputed domain name is not intended to be accessed by random visitors. The functions that are provided by the website can be accessed via a QR code from an authorized mobile application, a web application that has the authorized session cookies, or via a REST API request that presents the right credentials.
The disputed domain name was not registered, and is not being used, in bad faith. The Respondent has chosen a registrar that provides a proxy service as a default benefit to avoid spam being sent to registrants’ personal addresses. The Complainant itself uses a proxy service. The disputed domain name resolves to an active website. In fact, the Complainant’s own evidence includes a screenshot of the landing page showing “GS1 Digital Link Analytics as a Service”. The Respondent uses two levels of subdomains in order to aggregate statistics at the supply chain and individual party level. The Respondent is in fact a solution provider to a member in good standing of a GS1 Member Organization. The member is a telecommunications provider that is piloting the use of the GS1 Digital Link to manage the operations of cell tower sites. The Complainant released the GS1 Digital Link source code in Github under the Apache 2.0 open-source license and still cannot imagine that solution providers and software developers would eventually take up its code where “gs1” appears in the URL of GS1 resolvers. This is clearly not evidence of bad faith by the Respondent. The Complainant and Respondent are not competitors, but in fact are essential to the global adoption of digital supply chain standards. The Respondent did not register the disputed domain name in order to disrupt the Complainant’s business, but rather to actually implement the GS1 Digital Link across industries, especially those that could benefit from global cooperation such as in logistics and telecommunications. The Respondent is not associated with the <gs1.info> domain name. The Respondent has only registered the disputed domain name once. This was done to test enhancements made to the GS1 Digital Link source code.
The fact that the Complainant chose to file a Complaint without trying to contact the Respondent shows a bad faith attempt at reverse domain name hijacking. The Complainant’s attempt to characterize the Respondent’s choice to conceal its private identity from the public Whois directory is deceitful and does not conform to the spirit of the General Data Protection Regulation. Proxy services are supposed to forward communications to domain name registrants. The fact that the Complainant did not even take the basic precautionary measure of contacting the proxy service to relay messages to the Respondent is an indicator of bad faith. The fact that the Complainant also uses a proxy service shows the hypocritical nature of the Complaint and is an indicator of a bad faith attempt to reverse domain name hijack the disputed domain name. The Complainant is able to elicit private information from the proxy service based on prima facie evidence.
6. Discussion and Findings
6.1 Unsolicited Supplemental Filings
The Complainant made an unsolicited supplemental filing after the filing of the Response. The Respondent made an unsolicited supplemental filing in reply.
Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although Paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
The Complainant makes its supplemental filing in order to clarify certain statements made in the Response. The Respondent, in turn, makes its supplemental filing to clarify certain allegations in the Complainant’s supplemental filing. The Panel observes that the Complainant’s supplemental filing responds to many new factual issues raised in the Response that could not reasonably have been anticipated at the time of the Complaint or amended Complaint. The Respondent has taken the opportunity to respond to the Complainant’s supplemental filing in its own supplemental filing. The Panel does not consider that accepting the supplemental filings will cause a delay in this proceeding.
Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into consideration in this decision according to their respective relevance, materiality and weight as part of the evidence on the record.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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.
A. Identical or Confusingly Similar
Based on the evidence provided, the Panel finds that the Complainant has rights in the GS1 trademarks, including the GS1 wordmark (referred to below as “the GS1 trademark”).
The disputed domain name wholly incorporates the GS1 trademark as its operative element. The only additional element is a TLD suffix (“.online”) which, as a technical requirement of registration, is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.11.
The Respondent argues that the Complainant’s trademark should have been refused registration on the grounds that it lacks distinctiveness. However, for the purposes of the first element of paragraph 4(a) of the Policy, it suffices to note that the Complainant’s trademark registration remains in effect. The Parties agree that this Panel has no authority to cancel a trademark.
The Respondent also notes that the Complainant has not registered “gs1” in every TLD. The Panel considers this argument irrelevant to the question whether the Complainant has rights in the GS1 trademark.
Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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.
The disputed domain name formerly resolved to a webpage that displayed the words “GS1 Digital Link Analytics as a Service”. At the time of this decision, the disputed domain name resolves to a webpage that is described as a tracking site for a software application. The Panel has already found that the disputed domain name is identical to the Complainant’s GS1 trademark. The Complainant submits that it has not licensed or otherwise authorized the Respondent to use that mark. These circumstances indicate that the Respondent’s uses of the disputed domain name are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does either use appear to be a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.
The Respondent’s name is “Elmer Robles”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, he claims an authorization to use “gs1” based on the GS1 Digital Link Documents and Source Code published on the GitHub.com platform under the terms of the Apache Software Foundation’s free software license, version 2.0, dated January 2004. However, Section 2 of that license grants a copyright license to source code, not a license to trademarks. Section 6 of that license expressly notes that it does not grant permission to use the trademarks of the Licensor “except as required for reasonable and customary use in describing the origin of the Work and reproducing the content of the NOTICE file”. The Respondent argues that it would be impossible for software developers to communicate to other developers the intention of their source code if they could not include “gs1” in URLs. However, he fails to substantiate that assertion or demonstrate that use of a trademark in a domain name rather than, say, included in, or attached to, the relevant software itself, is a reasonable and customary use in describing the origin of the software. The Respondent also argues that his enhancements of the GS1 Digital Link source code require that “gs1” be to the right of party and supply chain names and to the left of the TLD. However, he does not substantiate that assertion either. While he attaches much importance to the fact that an example Digital Link used in the source code shows a URL that incorporates the alphanumeric characters “gs1”, nothing in the use of that example implies that there is an engineering reason to use the GS1 trademark in a domain name – versus a referential use elsewhere such as in the relevant software – nor otherwise grants a licence or authorization to do so. Consequently, nothing in the record of this proceeding indicates that the Complaint, if upheld, would hinder the adoption and commercialization of the GS1 Digital Link standard or the Respondent’s objectives.
The Respondent further claims that he is a solutions provider to a GS1 member organization. However, he provides no evidence in support of this claim or that he is otherwise authorized to use the GS1 trademark in a domain name.
The Respondent does provide evidence of use of the disputed domain name by a previous registrant, and evidence of use of other domain names that he claims are registered by third parties. Nothing on the record of this proceeding indicates that this evidence is relevant to the question of how the Respondent uses the disputed domain name or whether he has rights or legitimate interests with respect to the disputed domain name.
In summary, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registration for GS1. The disputed domain name incorporates the Complainant’s GS1 trademark as its operative element. The website to which the disputed domain name formerly resolved displayed the name of the Complainant’s GS1 Digital Link standard and offered analytic services related to that standard. These circumstances give the Panel reason to find that the Respondent actually knew of the Complainant and targeted its GS1 trademark at the time that he registered the disputed domain name.
The Respondent used the disputed domain name at the time of the Complaint to resolve to a webpage that offered analytic services related to the Complainant’s GS1 Digital Link standard. The disputed domain name was apparently intended to operate for the commercial gain of the Respondent. Given the findings in Section 6.2B above, the Panel finds that the disputed domain name operated by creating a likelihood of confusion with the Complainant’s GS1 mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the services offered on that website within the terms of paragraph 4(b)(iv) of the Policy.
The Panel takes note that the use of the disputed domain name has now changed, and that it no longer resolves to a webpage that refers to any of the Complainant’s standards. It now resolves to a webpage that refers to a software application named “GetSimple” and juxtaposes that name with a phrase beginning with the word “one”. The words “GetSimple One - Home” appear in the header. This change of use does not alter the Panel’s conclusion; if anything, it appears contrived and is further evidence of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules, provides that 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”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent alleges that the Complainant has engaged in reverse domain name hijacking because it chose to file a Complaint without trying to contact the Respondent and inferred bad faith from the Respondent’s use of a proxy service.
The Panel does not find that the Complaint was brought in bad faith; on the contrary, the Panel has upheld the Complaint.
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 <gs1.online> be transferred to the Complainant.
Date: January 20, 2021