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Opus Group UDRP : Dot com and matching gTLD were salvaged in separate cases

Directnic

UDRPs have been denied.

The registrants of OpusGroup.com and its matching gTLD, Opus.Group, can thank the WIPO panelists for salvaging their domains.

Opus Group AB of Mölndal, Sweden filed two separate UDRPs,  the Respondents only addressed the one brought against the gTLD, Opus.Group.

In the latter case, they mentioned:

“The Respondent asserts that it has a legitimate interest in the disputed domain name as it uses it to host a community-based organization dedicated to promoting equitable community and economic development. It cites the Oxford Dictionary defining “opus” as “an artistic work, especially one on a large scale”

The Respondent asserts that it registered the disputed domain name in good faith to start a website for its new community-based organization in the United States of America, and that the Respondent has continually and diligently worked towards setting up and improving its website. It also states that it never heard of the Complainant, its business and marks until it received the Complainant’s cease and desist letter.”

There was no response in the OpusGroup.com case, but the sole panelist, Ian Lowe, stated:

The Complainant entirely ignores the fact that the WhoIs-listed Registrant Organisation is “Opus Group LLC” and that, leaving aside the corporate tag “LLC”, the Respondent may not only commonly be known by the Domain Name but, on its face at least, the Domain Name is its name.

For those reasons, both OpusGroup.com and Opus.Group are to remain with the Respondents, that are unrelated to each other.

Full text of these cases follows:

Opus.Group

Opus Group AB v. Guilherme Prado
Case No. D2017-1059

1. The Parties

The Complainant is Opus Group AB of Mölndal, Sweden, represented by Ports Group AB, Sweden.

The Respondent is Guilherme Prado of Atlanta, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <opus.group> 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 May 31, 2017. On May 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2017, 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 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2017. The Response was filed with the Center on June 25, 2017.

The Center appointed Luca Barbero as the sole panelist in this matter on June 30, 2017. 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 in Sweden and provides vehicle testing services since 1990.

The Complainant is the owner of the following trademark registrations:

– Swedish trademark No. 1990-01366 for OPUS PRODOX (figurative mark), registered on October 29, 1993, in class 9;

– European Union trademark No. 012907259 for OPUS (word mark), registered on October 8, 2014, in classes 37, 41 and 42;

– European Union trademark No. 013907837 for OPUS (figurative mark), registered on September 23, 2015, in classes 37, 41 and 42;

– European Union trademark No. 012399655 for OPUS GROUP (word mark), filed on December 6, 2013, in classes 37, 41 and 42.

The disputed domain name <opus.group> was registered on June 10, 2016 and is currently pointed to a webpage providing a link to a contact form and displaying a drawing representing the character Opus the Penguin close to a box with the wording “Trojan Magnum Large Condoms” and the statement “OPUS GROUP Join our community of artists today”. According to the screenshot submitted by the Complainant and not challenged by the Respondent, the disputed domain name was previously pointed to a parking page with sponsored (pay-per-click) links provided by the concerned Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trademark OPUS and to the Complainant’s company name, as well as confusingly similar to the other trademarks that it owns.

The Complainant states that it has been doing business under the name “Opus Group” since 2012, and that it traded as “Opus Prodox” between 1990 and 2012.

The Complainant contends that the Respondent does not have any rights in the trademark OPUS, that the Respondent is not licensee of the Complainant and has not received any permission to register the trademark OPUS as a domain name.

The Complainant asserts that the Respondent’s website at the disputed domain name has been used to make profit, by using the Complainant’s trademark OPUS and publishing sponsored links, including links to vehicle testing sites. The Complainant also informs the Panel that, after the sending of a cease and desist letter to the Respondent on October 13, 2016, the content published at the disputed domain name has been altered to “some form of an advertisement for condoms and a contact form but with no other information whatsoever”.

The Complainant points out that there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name. Therefore, the Complainant states that the Respondent has no right or legitimate interest in respect of the disputed domain name.

The Complainant claims that the Respondent was well aware of the Complainant’s trademarks and business when registering the disputed domain name, as the Complainant has used the trademark OPUS as early as 1990, which means that it was using the trademark for at least 16 years before the disputed domain name was registered.

In addition, the Complainant asserts that the Respondent’s use of the disputed domain name shows the Respondent’s intention to take advantage of the trademark OPUS by profiting from the likelihood of confusion between the trademark and the disputed domain name or at least use the likelihood of confusion in a way that is detrimental to the Complainant and its business.

The Complainant also states that the Respondent did not reply to the cease and desist letter.

The Complainant concludes that all of the above-mentioned circumstances strongly suggest that the disputed domain name has been registered and used in bad faith by the Respondent.

B. Respondent

The Respondent submits that the Complainant is not entitled to a broad protection for the trademark OPUS as at least 911 exact hits are highlighted when searching for “opus” in the European Union Intellectual Property Office (EUIPO) database and 2,706 results are shown for marks containing the word “opus”.

The Respondent also notes that the Complainant’s European Union trademark OPUS GROUP on which the Complainant relies was opposed by a third party, and that the Complainant is not the only entity calling itself “Opus Group” and using a similar domain name, as 11 other companies use similar names and websites to identify their businesses. The Respondent concludes that the Complainant’s rights in its marks are weak and exist in a crowded field such that said marks can co-exist with the disputed domain name without creating confusion.

The Respondent asserts that it has a legitimate interest in the disputed domain name as it uses it to host a community-based organization dedicated to promoting equitable community and economic development. It cites the Oxford Dictionary defining “opus” as “an artistic work, especially one on a large scale” and describes its project related to the disputed domain name as follows: “Opus Group is a group that believes in the power of community-led, grass-roots artistic interventions that highlight community issues, fosters conversation and understanding, while celebrating all aspects of the urban fabric that makes a place vibrant and instills community pride”. The Respondent contends that the disputed domain name is used in connection with the relied-upon meaning of the word “opus” and not to trade off third-party rights in the word.

The Respondent further points out that its website has a clean, direct aesthetic that clearly communicates its purpose to invite users to join the community of artists. This invitation is encouraged through the humor of Opus the Penguin, a well-known character.

The Respondent also states that it did not obtain any compensation for the advertisements available on the prior parking page hosted at the disputed domain name.

In view of the above, the Respondent concludes that it has made a legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers for commercial gain or to tarnish the Complainant’s trademarks.

The Respondent asserts that it registered the disputed domain name in good faith to start a website for its new community-based organization in the United States of America, and that the Respondent has continually and diligently worked towards setting up and improving its website. It also states that it never heard of the Complainant, its business and marks until it received the Complainant’s cease and desist letter.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the trademark OPUS based on the European Union trademark registration No. 012907259 for OPUS (word mark) cited above.

The Panel finds that the disputed domain name is identical to the trademark OPUS as it encompasses it in its entirety with the addition of the generic Top-Level Domain (gTLD) suffix “.group”.

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s figurative trademark OPUS (registered in European Union under No. 013907837), as the core of the Complainant’s mark is constituted of the denominative portion “opus” and, in general, device elements in a trademark are disregarded being incapable of representation in domain names.

Moreover, the Panel also accepts the Complainant’s contention as to the confusing similarity of the disputed domain name with its trademark OPUS GROUP, registered in European Union under the number 0123996551 . As stated in section 1.11.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a mark “TRADEMARK”, the domain name <trade.mark> would be confusingly similar for UDRP standing purposes)”.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to registered trademarks in which it has established rights pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests

The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

According to the documents and statements submitted by the parties, the Complainant has no relation with the Respondent and has not authorized it to use its trademarks or the disputed domain name.

In addition, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain name.

The Respondent claimed to have a legitimate interest in the disputed domain name, stating that it registered it to promote a new community of artists named “Opus Group” and that its website, showing a contact form, a drawing featuring the character Opus the Penguin and the statement “Join our community of artists today” is under development. However, the Complainant demonstrated that, prior to the sending of its cease and desist letter to the Respondent, the disputed domain name was pointed to a parking page provided by the concerned Registrar displaying pay-per-click links.

Despite the Respondent’s indication that it did not obtain any compensation from the sponsored advertising that was previously displayed on the website at the disputed domain name, the Panel is not persuaded by the Respondent’s explanations as to the reasons why it finalized the registration, as the Respondent has not submitted any document, besides a screenshot of its website as it is currently online, to substantiate its assertions concerning its intended use in connection with a community of artists called “Opus Group”. Therefore, the Panel cannot exclude that the Respondent might have published the webpage currently available at the disputed domain name on purpose, after receipt of the Complainant’s cease and desist letter, to build a defense in the event of a UDRP case.

In view of the above, the Panel finds that the Respondent did not provide convincing elements to rebut the Complainant’s prima facie case by demonstrating that it is using the disputed domain name for a legitimate noncommercial or fair use.

Therefore, also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered several years after the registration of the Complainant’s trademark OPUS.

However, on the basis of the statements and documents submitted, the Panel is not in a position to conclude that the Respondent was or ought to be aware of the Complainant’s trademark. The Panel should consider that, as also noted by the Respondent, several other entities have adopted and are using the terms “opus” or “opus group” to identify their business. In addition, the Complaint was not provided with evidence of the extension of the use of its trademarks and, therefore, the Panel cannot assess the notoriety of the Complainant’s trademarks and whether the Respondent could have been aware of it.

Moreover, no evidence was submitted that the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name or has registered it with the specific intent to attract Internet users to its website for commercial gain by causing a likely of confusion with the Complainant’s trademarks.

With reference to the use of the disputed domain name, as mentioned in the prior paragraphs, the disputed domain name was pointed in the past to a parking page with sponsored links provided by the concerned Registrar and, apparently after the Respondent’s receipt of a cease and desist letter from the Complainant, the disputed domain name was pointed to a webpage displaying content not related to the Complainant purportedly promoting a noncommercial activity.

Although the Panel notes that a registrant is anyway responsible for contents displayed on the website to which its domain name resolves, independently from the circumstance that possible commercial revenues are gained by the registrant itself, a registrar or a third party, based on the screenshots on records, the Panel notes that the parking page to which the disputed domain name was initially pointed, anyway displayed generic links and mostly not specifically referred to the Complainant and/or its services.

Therefore, the Panel was not provided with convincing elements from which it could be inferred, on the balance of probabilities that the Respondent’s intention was to target the Complainant and its trademarks.

In view of the above, the Panel finds that the Complainant has failed to establish the third element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Sole Panelist
Date: July 14, 2017

1 The Respondent asserted that this trademark was not registered as it was subject of an opposition. However, the Panel verified on the public EUIPO database that said trademark was registered on July 6, 2017, following a limitation of the original trademark application.

OpusGroup.com

Opus Group AB v. Opus Group LLC
Case No. D2017-1061

1. The Parties

The Complainant is Opus Group AB of Mölndal, Sweden, represented by Ports Group AB, Sweden.

The Respondent is Opus Group LLC of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <opusgroup.com> (the “Domain Name”) 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 May 31, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 2, 2017, 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 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2017.

After the Notification of Respondent Default was sent, the Center received an email from Gerardo Mejia, of Mejia Law Firm LLC, stating “What are you referring to? I have not received any notice regarding this ‘alleged’ dispute.” Gerard Mejia is cited as the “Registrant Name” in the WhoIs record of the Domain Name. No further communication was received by the Center. The Panel is satisfied that the Respondent was given due notice of the Complaint in accordance with the Rules.

The Center appointed Ian Lowe as the sole panelist in this matter on July 4, 2017. 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 company incorporated in Sweden in 1990 that has provided vehicle testing services in Sweden and around the world . From 1990 to 2012 it was known as Opus Prodox. It changed its name to Opus Group AB on July 2, 2012. The Complainant is the registered proprietor of trademarks including:

– Sweden trademark number 1990-01366 in respect of the stylized word mark OPUS PRODOX registered on October 29, 1993;

– European Trademark number 012907259 OPUS registered on October 8, 2014;

– European Trademark application number 012399655 OPUS GROUP filed on December 6, 2013.

The Domain Name was registered on November 8, 2000. In October 2016, the Domain Name resolved to a parking page provided free by the Registrar which, according to the Complainant, included sponsored links to vehicle testing sites. The Complainant sent a cease and desist letter to the Respondent in October 2016 to which there was no reply. At the time of preparation of the Complaint, the Domain Name did not apparently resolve to any active website. However, it now resolves once more to a parking page provided by GoDaddy.com with links that do not obviously include vehicle testing sites.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its OPUS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

So far as rights and legitimate interests are concerned, the Complainant alleges that “there is no evidence that the Respondent has been commonly known by the Domain Name or is making a legitimate noncommercial or fair use of the Domain Name. Considering all of the above, it is obvious that the Respondent has no right or legitimate interest in respect of the Domain Name.”

In relation to bad faith, the Complainant states that its trademarks were registered well before the Respondent became the owner of the Domain Name. It asserts that “it is obvious that the Respondent was well aware of the Complainant’s trademarks and business when registering the Domain Name.” The Complainant states that it was using the OPUS trademarks as early as 1990, which means that the Complainant was using the trademark for at least 10 years before the Domain Name was registered. The Complainant also relies on the fact that the website to which the Domain Name resolved used to include links to vehicle testing sites, which implies knowledge of the Complainant’s trademarks and business. On this basis, the Complainant asserts that the Respondent is trying to take advantage of the OPUS trademark or at least to inflict damage on the Complainant’s business. It therefore submits that the Domain Name was registered to profit from the likelihood of confusion between its trademark and the Domain Name, or at least to use the likelihood of confusion in a way that is detrimental to the Complainant and its business.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

At the time of filing the Complaint, the Complainant has uncontested rights in the OPUS trademark (the “Mark”), by virtue of its trademark registrations. Although the Complainant has not produced any specific evidence as to such use, the Panel is also prepared to accept that the Complainant is likely to have acquired some goodwill and reputation in the mark OPUS GROUP through its carrying on business under that name since 2012. Ignoring the generic Top Level Domain (gTLD) suffix “.com”, the Domain Name comprises the Mark together with the generic or descriptive term “group” and the entirety therefore of the name “Opus Group”. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests

As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states, the overall burden of proof in UDRP proceedings is on the complainant, but panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Accordingly, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden in respect of this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.

In this case, however, the entirety of the case put forward by the Complainant on this element is, first, that the Complainant has not given the Respondent any permission to register “Opus Group” as a domain name; second, that there is no evidence that the Respondent has been commonly known by the domain name; and, third, that by using the website at the Domain Name to make a profit (through sponsored links to third party websites) before the Complainant’s cease and desist letter was sent, the Respondent has not made noncommercial or fair use of the Domain Name.

The Complainant entirely ignores the fact that the WhoIs-listed Registrant Organisation is “Opus Group LLC” and that, leaving aside the corporate tag “LLC”, the Respondent may not only commonly be known by the Domain Name but, on its face at least, the Domain Name is its name. The Complainant has not disputed this or adduced any evidence throwing doubt on the bona fides of the Respondent as to its name, or as to when the Respondent was incorporated by that name or as to the activities of the Respondent company.

In the Panel’s view, there is accordingly colourable prima facie evidence that the Respondent does have rights or legitimate interests in respect of the Domain Name that the Complainant has failed to adequately address. In circumstances such as these, the fact that the Domain Name resolves to a parking page provided free by the Registrar which, no doubt through algorithms operating on the Domain Name, generates links to third party websites including those that relate in some way to the Complainant with the same name as the Domain Name, does not by itself prejudice the prima facie case that the Respondent may have relevant rights or legitimate interests. In a case such as that is an issue that might fall to be considered in relation to the bad faith element.

In light of the above, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith

In view of the Panel’s finding in respect of the second element, it is not strictly necessary to address the third element. Nevertheless, in the circumstances of this case, the Panel will do so.

The Complainant states that its trademarks were registered well before the Respondent became the owner of the Domain Name. The only evidence the Panel has as to when the Respondent became the owner is the date of registration of the Domain Name on November 8, 2000 and the statement in the Registrar’s verification response to the Center that the Domain Name was registered to the Respondent “since at least July 3, 2016”. In the absence of any evidence to the contrary which it would be incumbent on the Complainant to advance, therefore, the Panel assumes that the Respondent registered the Domain Name on November 8, 2000. As at that date, according to the Schedule annexed to the Complaint, the only trademark registered by the Complainant was OPUS PRODOX, registered in Sweden. Although the Complainant relies on the fact that it has been carrying on business since 1990, it has not adduced any evidence as to the extent of its activities, the level of its sales or marketing effort or any evidence to suggest that the Respondent was likely to have known of the Complainant in November 2000. Even if there were such evidence, the Complainant was known up to that date and beyond as “Opus Prodox”, not “Opus Group”.

The Panel cannot see any justification on the evidence before it for the Complainant’s assertion that “it is obvious that the Respondent was well aware of the Complainant’s trademarks and business when registering the Domain Name.” The Panel does not accept that, even if there were evidence that the person registering the Domain Name <opusgroup.com> was aware of an entity carrying on business as Opus Prodox that owned the registered trademark OPUS PRODOX, this would demonstrate that the registration was likely to have been in bad faith. In this case, there is no evidence that the Respondent was aware of the Complainant or its business carried on under the name “Opus Prodox” when it registered the Domain Name or any basis on which to draw an inference that it is likely to have been so aware. This also leaves to one side the fact that the name of the entity registering the Domain Name in this case was ostensibly named Opus Group LLC.

Accordingly, the Panel considers that the Complainant has failed to demonstrate on any view that the Respondent is likely to have had the Complainant and its rights in any relevant trademark in mind at the time it registered the Domain Name, and that the Complainant has therefore failed to establish that the Domain Name was registered in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Ian Lowe
Sole Panelist
Date: July 12, 2017


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