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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fields of Leads, Ltd. v. Zhang Wei

Case No. DCO2020-0031

1. The Parties

The Complainant is Fields of Leads, Ltd., Israel, represented by Salomon Lipschutz House, Israel.

The Respondent is Zhang Wei, China.

2. The Domain Name and Registrar

The disputed domain name <pretected.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 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 June 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2020.

The Center appointed Kaya Köklü as the sole panelist in this matter on August 5, 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 limited liability company which is incorporated under the laws of Israel. It is internationally active and provides various ad monetization and insurance related services, including auto, life, home, and health insurance services.

The Complainant is the owner of the United States of America trademark registration 5,717,652 (registered on April 2, 2019) for the word mark PRETECTED (Annex 5 to the Complaint). This trademark registration provides protection for various insurance related services as covered in classes 35, 36, and 41.

The Complainant also owns and operates its official website at “www.pretected.com” since 2018 (Annex 7 to the Complaint).

The Respondent is an individual from China.

The disputed domain name was registered on February 26, 2020.

The disputed domain name does not resolve to an active website. The Complainant submitted evidence that the disputed domain name had been used in connection with pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is identical to its PRETECTED trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has also registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

A. Identical or Confusingly Similar

The disputed domain name is, in view of the Panel, identical to the Complainant’s PRETECTED trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.

In the Panel’s view, the country code Top-Level Domain (“ccTLD”) “.co” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark.

In view of the finding above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark PRETECTED, especially as the disputed domain name is identical to the Complainant’s trademark (see section 2.5.1 of the WIPO Overview 3.0).

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name, not least because the disputed domain name has yet not been actively used. In the absence of a Response, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name. At the date of registration of the disputed domain name, the Complainant’s PRETECTED trademark was already registered and in use. The assessment of bad faith registration is further supported by the fact that the disputed domain name is identical to the non-dictionary trademark of the Complainant.

As to whether the Respondent has also used the disputed domain name in bad faith, as already indicated before, the disputed domain name is not currently linked to an active website but was in the past used for PPC links. Nonetheless, and in line with the opinion of numerous UDRP panels before (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith use.

Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s non-dictionary trademark PRETECTED as sufficiently distinctive, so that any descriptive or fair use of the Complainant’s trademark by the Respondent seems unlikely. Furthermore, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use. Finally, the Panel notes that it cannot conceive of any plausible and legitimate use of the disputed domain name that would be in good faith, except with an authorization of the Complainant. Particularly, as the disputed domain name is identical to the Complainant’s trademark, the Panel is of the opinion that any active website linked to the dispute domain name would likely cause the false impression that it is operated or at least endorsed or authorized by the Complainant.

In addition, the Complainant submitted evidence of use of the disputed domain name for PPC links targeting the industry of the Complainant. The submissions and evidence provided by the Complainant supports an inference of bad faith registration with the purpose of attempting to trade off the Complainant’s goodwill in the trademark, and the Respondent has failed to rebut this presumption.

Taking all circumstances of this case into consideration, the Panel concludes that in the present case the passive holding of the dispute domain name sufficiently indicates bad faith use by the Respondent.

Consequently, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 <pretected.co> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: August 17, 2020

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