WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Car Classifieds Asia S.a.r.l. v. dotPH PrivateRegistration / Netrepreneur Connections Enterprises, Daniel Scott
Case No. DPH2015-0001
1. The Parties
The Complainant is Car Classifieds Asia S.a.r.l. of Luxembourg, Luxembourg, represented by SyCip Salazar Hernandez & Gatmaitan of Philippines.
The Respondent is dotPH PrivateRegistration / Netrepreneur Connections Enterprises, Daniel Scott of Philippines.
2. The Domain Name and Registrar
The disputed domain name <carmudi.ph> (the “Domain Name”) is registered with DotPH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2015. On June 22, 2015, the Center transmitted by email to DotPH a request for registrar verification in connection with the Domain Name. On June 30, 2015, DotPH transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2015 providing the registrant and contact information disclosed by DotPH, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 21, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the.PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2015. The Respondent filed email communications with the Center on July 13, 2015 and July 31, 2015. The Respondent did not submit any substantive response. Accordingly, the Center notified the Respondent’s default on August 25, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 1, 2015. 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 organized under the laws of Luxembourg. The Complainant operates a popular “car classifieds” website at “www.carmudi.com”, which links to separate websites for each country it serves, including the Philippines. The website serves as a marketplace portal for buyers and sellers of new and used automobiles, motorcycles, and commercial vehicles in emerging markets. The website also features automotive news, reviews, and advertisements from vehicle dealers and manufacturers.
The Complainant was established in 2013 with backing from the Rocket Internet incubator firm in Germany, launching or rebranding national portals for Bangladesh, Mexico, Myanmar, Nigeria, and Pakistan. The Complainant now operates portals for twenty countries. The Philippine portal opened in 2014 at “www.carmudi.com.ph”. According to the dotPHWhoIs database, that domain name <carmudi.com.ph> was created on September 15, 2013.
The Complainant has registered the CARMUDI mark with the WIPO, International Registration Number (“IR Number”) 1205114 (January 29, 2014), IR Number 1206755 (March 3, 2014), and IR Number 1215253 (April 28, 2014). The WIPO ROMARIN database shows that the underlying national registrations were issued in Germany on December 2, 2013 (apparently following an application dated September 6, 2013) and in the Benelux countries on February 10, 2014 and February 26, 2014 (it appears from the ROMARIN database that the applications were filed on December 30, 2013). IR Number 1206755 was recognized by the Philippines on November 27, 2014.
According to the dotPH, the Respondent Netpreneur Connections Enterprises registered or acquired the Domain Name on October 28, 2013. The Respondent Daniel Scott corresponded with the Center in connection with this proceeding, evidently as an owner or representative of Netpreneur Connections Enterprises. Hence, both will be referred to collectively as the “Respondent” in this decision. No substantive Response was submitted, however, so there is little information on this record concerning the Respondent. The Respondent appears to be an Internet marketing company in the Philippines, which was itself the complainant in an earlier phDRP proceeding, Netrepreneur Connections Enterprises Inc. v. Anton Sheker, Seo.Com.Ph, WIPO Case No. DPH 2011-0003. At the time of the decision in that proceeding, in 2011, the Respondent in the current proceeding was operating a classified advertisements portal for the Philippine market at “www.sulit.com.ph”. (“Sulit” is a Filipino term for “a good buy”.) According to the decision in that proceeding, the current Respondent obtained trademark registration in the Philippines for the mark SULIT.COM.PH. There is no indication in the record of that proceeding that the Respondent in the current proceeding used the name “Carmudi” at that time. The domain name <sulit.com.ph> currently redirects users to a classified advertisements portal at “www.olx.ph”, again with no reference to “Carmudi”.
The Domain Name does not currently resolve to an active website, and there is no evidence that it has ever done so. The Internet Archive’s “Wayback Machine” preserves screen shots from 2014 showing that the Domain Name was formerly associated only with a page displaying the message, “Future website of carmudi.ph”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its registered CARMUDI mark and that the Respondent has demonstrated no rights or legitimate interests in the Domain Name.
The Complainant argues that registering the Domain Name is a “clear breach” of the protection afforded by the Complainant’s Philippine trademark registration. The Domain Name has not been used for an active website, but the Complainant argues that its mark nevertheless may be “diluted” and “impaired”, because Internet users may conclude that the Complainant’s website is no longer operational. The Complainant also suggests that the Domain Name was registered in bad faith because the Respondent apparently made no effort to determine if the Domain Name would infringe another party’s intellectual property rights, as required by the registration agreement. Finally, the Complainant asserts that the Domain Name was registered to prevent the Complainant from obtaining a corresponding domain name in the “.ph” country code top-level domain (“ccTLD”).
The Respondent did not reply to the Complainant’s contentions, despite submitting several email communications to the Center.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a 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.”
The relevant portions of the phDRP are identical to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), and the Panel will accordingly cite decisions under the UDRP as they bear on the issues in this proceeding.
A. Identical or Confusingly Similar
The Domain Name is identical to the Complainant’s registered CARMUDI mark, disregarding the country code Top-Level domain (“ccTLD”) “.ph”, which is not materially distinctive for Policy purposes. The Panel concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists non-exhaustive examples of how the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(1) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(2) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(3) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well established that after a complainant makes a prima facie case that a respondent lacks rights or legitimate interests, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The Respondent in this proceeding has not come forward with any claim to rights or legitimate interests, and none appears from a perusal of the record or from the earlier phDRP proceeding involving the Respondent as a complainant.
The Panel concludes, accordingly, that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”:
“(1) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(2) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant contends that the Respondent had no reason to choose the Domain Name “except to prevent Claimant from establishing its online presence in the Philippines through the use of such domain name”. However, paragraph 4(b)(2) of the Policy, quoted above, implies bad faith only where there is a demonstrated “pattern of such conduct”, which does not appear on the current record.
The Complainant argues that the Respondent acted in bad faith simply by registering a name protected by Philippine trademark law and failing to meet its “obligation” under the registration agreement to determine if the Domain Name would infringe the Complainant’s rights. It is not necessary for the Panel to determine the degree of diligence required of domain name registrants in agreeing not to violate the intellectual property rights of others. The question is immaterial in this proceeding because of the sequence of events. The Complainant did not obtain trademark registration in the Philippines until November 27, 2014; more than a year after the Respondent registered or acquired the Domain Name on October 28, 2013. Indeed, it does not appear from the record or from the WIPO ROMARIN database that the Complainant held CARMUDI as a registered trademark in any country at that time.
The Complainant must establish the probability of the Respondent’s bad faith in both the registration and use of the Domain Name. The Policy, paragraph 4(a)(3), requires a showing that “the disputed domain name has been registered and is being used in bad faith” (emphasis added). The Complainant does not address the obvious timing issue in this proceeding, where the Domain Name registration substantially antedates the Complainant’s trademark registrations. The Complainant does not assert or establish prior rights to CARMUDI as an unregistered mark protected under common law or otherwise.
However, there are cases where bad faith registration can be demonstrated even before the complainant has perfected relevant trademark rights. See WIPO Overview 2.0, paragraph 3.1:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark.”
Although the Complainant does not address this possibility, the Panel takes into account evidence suggesting that the Respondent was aware of the Complainant’s plans to use the CARMUDI mark when the Respondent registered the Domain Name:
The Complainant registered the domain name <carmudi.com> on September 13, 2013, a week after applying for trademark registration of CARMUDI in Germany. The Complainant then registered the domain name <carmudi.com.ph> on September 15, 2013. When the Respondent registered the Domain Name a few weeks after that, the Respondent would likely have discovered that both of these domain names corresponding to “Carmudi” were already registered by the Complainant.
The Panel further notes that there was international media attention in 2013 surrounding Rocket Internet’s launch of the Complainant’s business under the brand name CARMUDI (see the Wikipedia article on “Carmudi”). The CARMUDI platform was announced publicly at a trade show in Germany, as reported in the publications “Silicon Europe Daily” and “TechInAsia” on October 28, 2013, the latter indicating that “Rocket intends to roll out the service into more parts of Asia in the coming months.” According to the registrar dotPH, the Respondent registered or acquired the Domain Name within a day of these publications, strongly suggesting that the Respondent learned of the Complainant’s planned CARMUDI brandt.
The Complainant’s mark is a distinctive, coined name. According to the Complainant’s International Registrations of the CARMUDI mark, the word comprising the mark “has no meaning”. The Panel notes that it does not appear in English or Filipino dictionaries.
There is no indication in the record, or on the websites currently or previously associated with the Respondent, that the Respondent has ever used the term “Carmudi” other than in the Domain Name itself.
When it registered the Domain Name, the Respondent was already operating an established classified advertisements portal in the Philippines, which included a “Cars” section. The anticipated expansion of the Complainant’s business into the Philippine market would make the Complainant a direct competitor.
Despite corresponding with the Center about this proceeding, the Respondent submitted no formal Response. Thus, the Respondent has offered no explanation for selecting the Domain Name.
In short, the Panel does not find it credible that the Respondent chose the same coined term by coincidence. The Respondent registered the Domain Name, <carmudi.ph>, on the same day that the Complainant, a potential competitor, publicly announced its new CARMUDI brand. The Panel concludes that the Respondent, more likely than not, registered the Domain Name in contemplation of that announced mark. The Panel concludes that this conduct reflects bad faith within the meaning of the Policy. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845 (respondent targeted an announced brand name following media stories about the planned development).
The Respondent has not used the Domain Name for a website or linked it to the Respondent’s own classified advertisements portal. This does not preclude a finding of bad faith. See WIPO Overview 2.0, paragraph 3.2: “Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.” Given the distinctive, coined mark and the timing of the Domain Name registration, it is hard to conceive how the Domain Name could be meant for any legitimate use. “Passive holding” can represent bad faith use of a domain name, especially in circumstances where “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel concludes that the third element of the Policy is established, in view of all the circumstances in this proceeding.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <carmudi.ph> be transferred to the Complainant.
W. Scott Blackmer
Date: September 15, 2015