WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

XXL Webhosting B.V v. J Lapp / Domains By Proxy, LLC

Case No. D2012-1217

1. The Parties

The Complainant is XXL Webhosting B.V of Leeuwarden, Netherlands, represented by SOLV Advocaten, Netherlands.

The Respondent is J Lapp of Scottsdale, Arizona, United States of America / Domains By Proxy, LLC, Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cloudprovider.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2012. On June 14, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 15, 2012, GoDaddy.com, LLC 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 June 20, 2012 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 June 22, 2012

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2012.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on August 3, 2012. 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.

The initial Complaint identified Domains by Proxy, LLC as the Respondent. However, the registrant of the disputed domain name was identified by the concerned Registrar, GoDaddy.com, LLC, as being different to the entity named as the Respondent in the initial Complaint.

Subsequently the Complaint was amended to show “J Lapp” as the Respondent.

4. Factual Background

The disputed domain name <cloudprovider.com> was registered on April 8, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant does not rely on any trademark registrations in relation to the terms Cloud Provider. However, it offers webhosting services, including an advanced cloud platform for setting up servers, and for this purpose it operates websites that resolve to the domain names <cloudprovider.nl>, <cloudprovider.eu> and <cloudproviderusa.com>. The Complainant asserts it has a branch in the United States where it maintains the latter domain name and offers services under the trade name “Cloud Provider USA”.

The Complainant contends that it has established rights in the trade name “Cloud Provider” as an unregistered or common law mark, and submits that it has commonly been held under the Policy that this is sufficient to establish it has rights as required by paragraph 4(a)(i) of the Policy. The Complainant contends that it can prove sufficient association with or secondary meaning in the name “Cloud Provider”. It contends that it has trade name rights under Dutch law and that the name has become a distinctive identifier in at least the Netherlands and the United States for the Complainant’s services.

The Complainant asserts that it has continuously performed webhosting services under the name Cloud Provider for customers in the United States and the Netherlands since 2008. Therefore awareness of its name extends beyond a small area. It has also used its name on websites, brochures and other written materials in relation to its webhosting service offers. The Complainant contends that along with the use of the domain names <cloudprovider.nl>, <cloudprovider.eu>, and <cloudproviderusa.com> it has built substantial goodwill and a reputation in the name “Cloud Provider” over a continuous 5 year period of use.

The evidence supplied by the Complainant to support this assertion is as follows:

- maintenance of the Complainant’s websites referred to above on which customers can register for the Complainant’s services and activities and on which it maintains a blog;

- the regular publication of press releases concerning its services, for example a press release contained on its website;

- the maintenance of a Facebook account where it provides information about services and posts updates and links;

- documents that establish the Complainant’s presence at various trade shows, in New York, Miami, Santa Clara and Utrecht (The Netherlands), and also two events organized by “Tech Data”. The majority of the events about which the Complainant provides evidence took place during 2012, but some in 2011;

- publication of “Cloud Provider” material by way of advertising and promotion, for instance on “www.hollandhub.com”; its own website; a promotional campaign offering free joyflights; 16 demo videos on “www.vimeo.com”, which expressly refer to the Complainant’s services and incorporate its logo and name; an animation on the website “Rock Paper Scissors”, on which the Complainant is described as “a unique webhosting service in the Netherlands”. All these publications are listed by the Complainant in its Complaint under the heading “Publications of Cloud Provider published in other media”.

Further, the Complainant contends that references made to “Cloud Provider” on third party websites establish that its name is recognized in these online publications as an identifier of webhosting services performed by it. The evidence of third party publications of this kind provided by the Complainant consists of screenshots dating from May 2012 of the following:

- an item published on the website “www.cloudtools.nl” entitled “Cloud Provider: Hosting with flexible capacity for which you pay per hour” (in translation);

- a blogpost on the website “www.mardkijkstra.nl” on “the new Cloud Portal service of Cloud Provider”;

- a link on the website “www.saas.startpagina.nl” with a link to the Complainant’s website under the title “Hosting providers”;

- an article published on the “www.thewhir.com” website about the launch of the SSD on-demand cloud storage solution of “Cloud Provider”;

- a profile page of the CEO of the Complainant;

- customer-written reviews on the internet about the Complainant’s services, to be found on the Complainant’s own website and on third party websites. One example of a twitter page message is provided in attachment; and

- a printout of the “Google” search results page for the search terms “Cloud Provider”, which establishes that many of the search results reference its services and website.

The Complainant further contends that despite the fact that the terms “Cloud Provider” have a certain generic nature, the name has acquired sufficient secondary meaning through extensive use and promotion over the years, and that it thus has unregistered rights in the name “Cloud Provider”. It follows that the disputed domain name is identical with the unregistered or common law mark of the Complainant.

Further, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it has neither registered nor unregistered trademark rights in the name “Cloud Provider”. The disputed domain name is only used for parking and landing pages, which lack of use indicates that the Respondent has no rights or legitimate interests, according to the Complainant. Furthermore, it has commonly been held that parking pages do not confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use. Nor is the Respondent commonly known under the disputed domain name as it has conducted no activities other than running the parking page by reference to the disputed domain name. According to the Complainant, the purpose of the Respondent is simply to park the disputed domain name until it can be sold, as is apparent from the text at the top of the website to which the disputed domain name resolves: “interested in this domain?”.

Further, the Complainant contends that the registration of the disputed domain name occurred in bad faith, which is apparent from the lack of use other than for parking purposes; the offer to sell the disputed domain name; and the fact the Respondent does not have a corresponding trademark. The initial concealment of identity of the Respondent by the use of a proxy service is also said to indicate bad faith because, in the Complainant’s contention the use of a proxy service can in some circumstances indicate bad faith, for example, where it is done for the purpose of concealment of the true identity of the Respondent, as is the case here.

B. Respondent

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

6. Discussion and Findings

According to Paragraph 15 of the Rules a Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable. In this case, only the Complainant has submitted material.

The terms of the Policy and the decisions of past UDRP panels establish that the requirements set out in paragraph 4 (a) of the Policy are cumulative. If the Complaint fails on any one of the three requirements it must fail as a whole.

A. Identical or Confusingly Similar

The Policy requires that the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel notes that in this case the disputed domain name was registered on a date (April 8, 2008) prior to the date the Complainant registered the domain names <cloudprovider.nl>, <cloudprovider.eu> (both September 18, 2008) and <cloudproviderusa.com> (October 2, 2011). The Complainant asserts that it has continuously performed webhosting services since 2008. It does not specify when exactly it commenced providing these services but it can be inferred that this occurred after September 18 of that year. Therefore the Panel concludes that the registration of the disputed domain name predates the time the Complainant commenced offering its relevant services.

In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.4, the Consensus View of Panelists in relation to the question “Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?” is represented as follows:

“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP [...]”

Obviously a Complainant’s position in this regard will be improved by the absence of any meaningful use by the Respondent of the disputed domain name.

The Complainant has no relevant registered trademarks, but it is well established that the Complainant can succeed on the basis of an unregistered or common law mark or marks. However, the Complainant must establish that it has rights in the unregistered mark. It is not impossible for a Complainant to establish that it has rights in a descriptive or generic term or terms, but it must advance sufficient evidence of secondary meaning acquired by use. The terms must distinguish the Complainant as the source of the particular services or goods offered under the mark.

In the present case, the terms “Cloud Provider” are inherently descriptive, as they describe a provider of cloud computing services or on-demand server space. The Complainant itself admits the terms have “a certain generic character”. The terms are descriptive of the kind of service the Complainant provides. Consumers of computer storage products and services would be familiar with the meaning of these terms in their descriptive primary sense. Neither word is created or invented or fanciful, or combined in a particular or unusual way. On the other hand, the term “CloudProvider” has some small element of inherent distinctiveness about it in that it is a contraction of the two terms.

The Complainant is in theory able to establish that the term or terms have acquired secondary meaning. According to the consensus position referred to above this can be done by putting before the Panel evidence including the “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” However, this is not an exclusive list and it should be open to the Complainant to establish secondary meaning by any method it deems probative.

In terms of the evidence provided by the Complainant, a number of points are relevant at the outset. The Complainant does not provide data concerning turnover or sales, client numbers, advertising expenditure or volume, and the like. Nor does it provide consumer survey evidence. It does not provide evidence of cumulative data over a period of time. There may be good reasons for not providing such data, but nonetheless the Panel is left without such evidence to consider. Further the evidence the Complainant does supply does not provide any historical data going back to 2008. When exactly it commenced offering its webhosting services, or promotion and advertising in relation to it is not in evidence. The Complainant’s statement that its name is protected under Dutch law is no more than an unsubstantiated assertion.

A further difficulty in this case is that the Complainant apparently seeks indiscriminately to rely on the use of different names or marks: “CloudProvider”, “Cloud Provider”; “Cloudprovider.nl”; “Cloudprovider.eu”; “CloudProviderUSA” and “CloudProviderUSA.com”. The Panel notes that nothing put before it establishes the precise relationship between the Complainant and the use of the various names or marks, in particular “CloudProviderUSA” and “CloudProviderUSA.com”.

Leaving that aside, in the United States the Complainant maintains that it uses as its mark and business name “CloudProviderUSA”, although the Panel notes that in the screenshot it provides of the CEO’s profile, there is a statement that “Cloud Provider” is only active in the Netherlands. Commonly also it uses as its mark a contraction of the words “cloud” and “provider” where the first appears in red and the second in black, the whole represented in a particular stylized script. The term “CloudProvider” so represented are commonly also used with a graphic element in the shape of a stylized black and red representation of a cloud in a position just above the words. Where terms are highly descriptive they may acquire secondary meaning or distinctiveness in a particular representation alone, rather than in the words as such. Rights then extend to the particular representation or combination rather than the bald underlying terms.

Further, the evidence the Complainant provides to prove secondary meaning is scant and amounts to little more than a recent snapshot. A substantial part of the evidence consists of representations of and about “Cloud Provider” on materials generated by the Complainant itself. This is effectively evidence of advertising, but there is no indication how pervasive the advertising is nor how successful in terms of client exposure, website visits, service uptake, turnover and the like. References to “CloudProvider” on its own blog pages, even though contributed by third parties, are not in themselves very probative, nor are they numerous in the material provided. The same can be said of the references to the Complainant’s own Facebook and Twitter accounts. The Complainant provides evidence of its presence at various trade expos, where screenshots of relevant organizers’ webpages show representations of its logo (“CloudProvider” plus cloud device); the name “CloudProvider USA” amongst the list of participants; material recounting the presence of the Complainant as an exhibitor, including references to “CloudProvider” and a representation of “CloudProvider” in stylized script plus device. Again this is effectively evidence of advertising and promotion by the applicant itself, but nothing is put before the Panel by the Complainant concerning the number of visitors to each of these shows, whether these are the most significant of only a few shows of this nature, or any other relevant information, nor how many times in the past years the Complainant has attended at these shows and how prominently it was on display.

The evidence also includes a promotional brochure where a free joyflight is offered, in return for taking an interest in the Complainant, with references to “Cloudprovider” and the domain name <cloudprovider.nl>; and a generic cloud computing webpage containing an account of a “Cloud Provider” employee of the services it offers. These are also materials generated quite recently by the Complainant itself, which do not in and of themselves establish what third parties’ perception of the Complainant’s name is.

In terms of third party generated material, the Complainant supplies evidence of one individual’s blog with an overview of “the new CloudPortal of Cloudprovider”; a recent article on ‘TheWhir’ website concerning a new storage solution offered by “CloudProvider USA”, which is referred to as such throughout; a screenshot of a single twitter page of a third party referring to “CloudProvider”; customer-written reviews on the internet about the Complainant’s services, to be found on the Complainant’s own website and on third party websites; and a screenshot of the Google.nl search results for the terms “Cloud Provider”. It should be noted that amongst the links appearing in the right hand margin of this screenshot are the hyperlinked terms Cloud Provider and Cloud Providers which do not link to the Complainant. Further, the screenshot does not show the whole page.

The totality of this evidence is not, in the Panel’s view, sufficient to establish the secondary meaning or distinctiveness the Complainant contends for, taking also into account the fact that many references to the Complainant appearing in the materials submitted are in forms other than the bald expression “Cloud Provider”.

The Panel notes that local reputation might be sufficient for the purpose of establishing rights in a common law mark. However, the evidence before the Panel does not on the balance of probabilities establish that in the Netherlands alone the terms have the necessary secondary meaning. The Complainant’s statement to the effect that its name is protected by Dutch law is a bold assertion that is not substantiated. The evidence of consumer awareness and perception of the distinctiveness of “CloudProvider” or “Cloud Provider” in that country that the Complainant provides is very limited. Further, many references are to Cloudprovider.nl, and to “CloudProvider” plus device. It may be that the latter has acquired considerable distinctiveness, but the Panel is of the view that this is not sufficient for the Complainant to establish that it has relevant rights in the terms “Cloud Provider” as such.

In conclusion, because: of the inherent descriptiveness of the terms at issue; of the insubstantial nature of the evidence of secondary meaning provided; of the absence of historical data concerning the volume and extent of the service offerings of the Complainant, or of its use of the terms “Cloud Provider”; of the fact that establishing distinctiveness of a particular representation of descriptive terms is not by itself enough to establish distinctiveness of the terms not so represented; the term “CloudProvider” was commonly used by the Complainant in a particular colour and script and in combination with a particular device; and because there is no evidence before the Panel of the volume of advertising, consumption or broad consumer perception of the Complainant’s services even in the Dutch market, the Panel is not persuaded that the Complainant has established sufficient rights in the terms “Cloud Provider” for purposes of satisfying the first element of the Policy in this proceeding.

Moreover, the disputed domain name was apparently registered before the Complainant started to use the incorporated terms for its own service, and before it registered any domain names incorporating those terms. Therefore it is not apparent that the Respondent registered the disputed domain name in bad faith, nor can it be said on this record that in the absence of competing trade mark rights he has no legitimate interest in a domain name that is descriptive of a class of services. It may be perfectly legitimate for a party, when a new descriptive term such as cloud computing starts to emerge, rapidly to register it with the intent of turning it to account once it has become common currency.

In any event, the Panel concludes that the Complainant has not made out that the disputed domain name is identical of confusingly similar with a trademark in which it has rights.

B. Rights or Legitimate Interests

Because of the adverse conclusion reached by the Panel in relation to rights of the Complainant in the terms “Cloud Provider”, the Panel need not address this issue.

C. Registered and Used in Bad Faith

Because of the adverse conclusion reached by the Panel in relation to rights of the Complainant in the terms “Cloud Provider”, the Panel need not address this issue.

7. Decision

For the foregoing reasons, the Complaint is denied.

WiIliam A. Van Caenegem
Sole Panelist
Date: August 17, 2012