WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McCoy & Partners B.V. v. Whois Agent / Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC
Case No. D2021-4042
1. The Parties
The Complainant is McCoy & Partners B.V., Netherlands, represented by AKD N.V., Netherlands.
The Respondent is Whois Agent, Domain Protection Services, Inc. (“United States”) / Domain Vault, Domain Vault LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <mccoy.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. On December 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2021, 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 December 14, 2021, 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 January 6, 2022.
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 January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2022.
The Center appointed Adam Taylor as the sole panelist in this matter on February 14, 2022. 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 was incorporated, and began trading under the name “McCoy”, in 2012. It provides information technology consultancy services.
The Complainant operates its main website at ‘www.mccoy-partners.com’.
The Complainant owns Benelux Trademark No. 1401161 for MCCOY, filed on August 26, 2019, registered on November 13, 2019, in classes 35 and 42.
The disputed domain name was created on January 24, 2001.
Various archive website screenshots dating from 2002 indicate that the disputed domain name has been used as a parking page with general pay-per-click (“PPC”) links.
The Complainant has made numerous unsuccessful attempts to contact the Respondent, including via a domain name broker.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant possesses unregistered rights in the trade mark MCCOY deriving from its international activities using that name.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent ignores all contact attempts. The failure of the Respondent to respond to communications violates the Respondent’s obligation in its domain name registration agreement to regularly monitor emails. Under the registration agreement, a domain owner is liable to lose its domain name if it does not respond to emails relating thereto.
The lack of response from the Respondent is analogous to the failure of a respondent to respond to a UDRP complaint and is indicative a lack of legitimate interest on the part of the Respondent.
The archive PPC parking pages show that, from 2002 to date, the Respondent has not use the disputed domain name “for any real purposes”.
There is no evidence of bona fide pre-Complaint preparations to use the disputed domain name, such as credible investment in website development or promotional materials, or a genuine business plan utilising the disputed domain name.
Nor is there any indication that the Respondent is commonly known by the disputed domain name or of any legitimate noncommercial or fair use thereof.
The disputed domain name was registered and is being used in bad faith.
The examples of registration and use in bad faith outlined in paragraph 4(b)(i)-(iv) of the Policy are non-exhaustive.
The Respondent’s failure to make demonstrable use of the disputed domain name as well as its failure to respond to communications relating to the domain name in violation of the registration agreement are evidence of bad faith.
The disputed domain name constitutes a passive holding in bad faith by virtue of the following factors.
First, the degree of distinctiveness or reputation in the Complainant’s mark. The Complainant’s use of the mark “McCoy” is distinctive of the services offered by the Complainant as it is not descriptive of the Complainant’s services, nor is it a generic term for information technology services.
Second, the failure of the Respondent to submit a response or provide any evidence of actual or contemplated good faith use. Instead, the Respondent has failed to acknowledge or reply to any communications from the Complainant or its broker.
Third, the Respondent’s concealment of its identity, making it impossible for the Complainant, its broker or any third party to work out the identity of the holder of the disputed domain name.
Fourth, the implausibility of any good faith use to which the disputed domain name may be put. There is no indication of good faith use or preparation to use the disputed domain name.
Merely because a domain name is initially created by a registrant other than the UDRP respondent before a complainant’s trade mark rights accrue does not mean that the respondent cannot be found to have registered or maintained, meaning actually used, the domain name in bad faith.
There is an absence of any conceivable good faith use of the disputed domain name as of the date of registration.
The Respondent has been the subject of at least 15 adverse UDRP cases. These constitute evidence of a pattern of bad faith registration and use under 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. Preliminary Issue – Respondent Default
The Respondent has failed to file a response.
While a panel may draw appropriate inferences from a respondent’s default (e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent), a respondent default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In cases involving wholly unsupported and conclusory allegations advanced by a complainant, or where a good faith defence is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark MCCOY by virtue of its registered trade mark, as well as unregistered trade mark rights deriving from its use of that mark.
Disregarding the Top-Level Domain (“TLD”) suffix, the disputed domain name is identical to the Complainant’s trade mark. Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
It is unnecessary to consider this element in view of the Panel’s findings under the third element below.
D. Registered and Used in Bad Faith
The Whois information for the disputed domain name shows a “creation date” of 2001, whereas the Complainant did not start trading until 2012, over a decade later.
Section 3.8.1. of WIPO Overview 3.0 observes that, except for limited circumstances involving registration of a domain name to capitalise on nascent trade mark rights, panels will not normally find bad faith on the part of the respondent where a respondent registers a domain name before the complainant’s trade mark rights accrue.
The Complainant touches on this issue by implying that the Respondent may not have been the first registrant of the disputed domain name. However, the Complainant provides no evidence of a later acquisition date, and the Panel must therefore proceed on the basis that the Respondent acquired the disputed domain name on the creation date shown in the Whois.
In these circumstances, it does not assist the Complainant that the Respondent has failed to respond to communications (whether or not a breach of the registration agreement) or to provide evidence of demonstrable preparations to use the disputed domain name for an active website, or even that there have been at least 15 negative UDRP decision against the Respondent.
As the Complainant and its rights did not exist in 2001, the disputed domain name could not have been registered in bad faith at that time. This is fatal to the Complainant’s case as the Complainant is required to prove both registration and use in bad faith.
Nor is the principle of passive holding relevant in this situation as this involves an assessment of whether the totality of the circumstances indicate that a passively-held domain name was registered to target the complainant.
The Panel would add that, even if there had been evidence that the Respondent had registered the disputed domain name after the Complainant had acquired trade mark rights, this would not have been a straightforward case for the Complainant, notwithstanding the Respondent’s default and negative UDRP history, given the fact, unacknowledged by the Complainant, that “McCoy” is a common surname, as well as the lack of any evidence of reputation on the part of the Complainant or of use by the Respondent in connection with the Complainant’s industry.
For the above reasons, the Panel considers that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: February 28, 2022