A UDRP filed against the aged domain Abreco.com has been decided: Deny transfer of the domain to the Complainant, Canadian Wear Technologies Ltd.
The Respondent was represented by the law offices of Howard Neu, who stated on behalf of his client:
The Respondent challenges all three limbs under paragraph 4(a) of the Policy. In respect of the first limb, the Respondent contends that (1) as the disputed domain name was registered before the Complainant obtained any registered trade mark rights in respect of the Trade Mark, the Complainant must provide sufficient evidence to demonstrate that its (at the time) unregistered Trade Mark had obtained secondary meaning; (2) the Complainant has failed to adduce evidence to demonstrate secondary meaning respect of its unregistered Trade Mark; and (3) accordingly, there is no likelihood of confusion between the disputed domain name and the Trade Mark. In respect of the second limb, the Respondent contends that he has rights and legitimate interests in respect of the disputed domain name, as an investor and trader in generic or “brandable” domain names.
The three member paneli in this UDRP at the WIPO agreed with these points. Although the transfer was denied, the Respondent’s request for a finding of Reverse Domain Name Hijacking was also denied.
The domain transfer was denied.
Canadian Wear Technologies Ltd. v. Privacy Administrator, Anonymize Inc
Case No. D2021-15721. The Parties
The Complainant is Canadian Wear Technologies Ltd., Canada, represented by OLLIP P.C., Canada.
The Respondent is Privacy Administrator, Anonymize Inc, United States of America (“United States”),/ Stanley Pace, United States, represented by Law Office of Howard M. Neu, PA, United States.
2. The Domain Name and Registrar
The disputed domain name <abreco.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 proceeding commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Response was filed with the Center on June 21, 2021.
The Center appointed Sebastian M.W. Hughes, Mathias Lilleengen, and Gerald M. Levine as panelists in this matter on July 13, 2021. The Panel finds that it was properly constituted. Each member of 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
A. Complainant
The Complainant is a company incorporated in Canada, carrying on business since 1985 as a manufacturer of very unique and high-end white iron laminated mining wear material, under the trade mark ABRECO (the “Trade Mark”).
The Complainant is the owner of (word and device mark) registrations for the Trade Mark in Canada, the United States, and Chile, the earliest of which being Canadian registration No. TMA1001436, with a registration date of July 24, 2018, and a date of first use in commerce of January 28, 1985.
B. Respondent
The Respondent is a United States citizen resident in the State of Texas. The Respondent is an investor in “generic or brandable” domain names.
C. The Disputed Domain Name
The disputed domain name was registered on August 10, 2004 and was purchased by the Respondent on September 20, 2008.
D. Use of the Disputed Domain Name
The Respondent has, since its registration, used the disputed domain name to generate pay-per-click revenue by resolving the disputed domain name to a parking page hosted by Sedo.com, with an offer to sell the disputed domain name, and with sponsored links to third party websites.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent challenges all three limbs under paragraph 4(a) of the Policy. In respect of the first limb, the Respondent contends that (1) as the disputed domain name was registered before the Complainant obtained any registered trade mark rights in respect of the Trade Mark, the Complainant must provide sufficient evidence to demonstrate that its (at the time) unregistered Trade Mark had obtained secondary meaning; (2) the Complainant has failed to adduce evidence to demonstrate secondary meaning respect of its unregistered Trade Mark; and (3) accordingly, there is no likelihood of confusion between the disputed domain name and the Trade Mark.
In respect of the second limb, the Respondent contends that he has rights and legitimate interests in respect of the disputed domain name, as an investor and trader in generic or “brandable” domain names.
As to the third limb, the Respondent denies any knowledge of the Complainant and of its Trade Mark at the time of registration of the disputed domain; and denies that he has been using the disputed domain name to target the Complainant’s Trade Mark.
The Respondent requests that the Panel make a finding of reverse domain name hijacking (“RDNH”).
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
As to the question of identity or confusing similarity, it is well-established that, for the purposes of the Policy, this requires a side-by-side analysis of the disputed domain name and the textual component of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The disputed domain name incorporates the entirety of the Trade Mark. Excluding the generic Top-Level Domain “.com”, the disputed domain name is identical to the Trade Mark.
Although the Complainant has not provided evidence to support the assertions in the Complaint as to the extent of its use of the Trade Mark since 1985 (including assertions as to sales of millions of kilograms of its mining wear products to customers in the mining industry in Canada, the United States, Mexico, Venezuela, Peru, Chile, Brazil, Germany, Poland, and Bulgaria), the Complainant relies upon its registration certificate for its registration for the Trade Mark in Canada, recording a date of first use in commerce of January 28, 1985. Noting also that the Trade Mark does not have any dictionary meaning (and that the Complainant contends that it “coined” the Trade Mark for use in respect of its mining wear products business), the Panel considers that the Complainant has met the requirements for establishing common law or unregistered rights in the Trade Mark, as set out in WIPO Overview, section 1.3.
The Panel is, however, unable to accept the Complainant’s bare assertion that the Trade Mark is “well-known” (whether in general, or in respect of the mining wear industry).
In any event, even if the Complainant is unable to establish unregistered rights in the Trade Mark, the fact that the disputed domain name was registered before the Complainant acquired (registered or unregistered) rights in the Trade Mark is immaterial for the purpose of the first element under paragraph 4(a) of the Policy (see WIPO Overview 3.0, section 1.1.3).
The Panel therefore finds that the disputed domain name is identical to the Trade Mark and the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In light of the Panel’s finding in Section 6.C. below, it is not necessary for the Panel to address the second limb under paragraph 4(a)(ii) of the Policy. If it were necessary, the majority of the Panel considers that the Respondent’s registration and use of the disputed domain name to generate pay-per-click revenue by way of sponsored links to third party websites unrelated to the Complainant or its Trade Mark, and as a speculative domain name investor, likely gives rise to rights or legitimate interests in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Central to the Complainant’s contentions regarding bad faith is the fact that, having ignored or rejected the Complainant’s previous offers to buy the disputed domain name for USD 500 and USD 800, the Respondent then sent a counter offer (on September 17, 2016) to sell the disputed domain name to the Complainant for the “unjustifiably elevated” price of USD 88,000; and that the Respondent then unreasonably rejected the Complainant’s most recent further offer of USD 1,500 (on April 17, 2021). The Complainant points to publicly available evidence of the sale of domain names for very low prices.
The Respondent, on the other hand, asserts (albeit without any supporting evidence) that he has sold some domain names in recent years for prices significantly higher than USD 88,000.The Panel is unable to conclude, in all the circumstances, that, in registering and using the disputed domain name, the Respondent has targeted the Complainant’s Trade Mark, for the following reasons:
(1) The Respondent has asserted in the Response that he had no knowledge of the Complainant and of its Trade Mark at the time he registered and commenced using the disputed domain name; and
(2) The evidence of the parking page for the disputed domain name relied upon by both Parties demonstrates that the Respondent has not targeted the Complainant or competitors of the Complainant, as none of the sponsored links relate to the Complainant’s goods or services supplied under the Trade Mark (or by any competitors of the Complainant in the mining wear industry).
In light of the above finding, it is not strictly necessary for the Panel to make any findings in respect of the Parties’ negotiations for the potential sale of the disputed domain name (which notably took place many years after the Respondent had purchased and commenced use of the disputed domain name). In any event, the Panel is not persuaded that an offer to sell a domain name for a very high price is, of itself, sufficient to amount to bad faith for the purposes of the third element under paragraph 4(a) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has not been registered and used in bad faith.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
RDNH is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” (see WIPO Overview 3.0, section 4.16).
Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH.
The Respondent has not made any submissions in respect of his request for a finding of RDNH.
The Panel considers that, in all the circumstances, the Complainant had sufficient prima facie grounds to commence this proceeding, and in doing so it did not act unreasonably, for the following reasons:
(1) The disputed domain name is identical to the Trade Mark;
(2) The Trade Mark is an invented word with no dictionary meaning, and is not (to use the Respondent’s parlance from the Response) “a generic or brandable name”;
(3) The Respondent’s use of a privacy service to shield his identity of itself might be considered an indicator of bad faith and furthermore made it difficult for the Complainant to ascertain the bona fides of the Respondent;
(4) The Respondent made no active use of the disputed domain name, instead offering it for sale via the parking page hosted by Sedo.com, with sponsored links;
(5) The failure of the Complainant (or its legal advisers) to appreciate the lack of evidence of the Respondent having targeted the Complainant’s Trade Mark, whilst perhaps suggestive of a lack of due care or grounded in its claim that the mark is a coined term, is not of itself indicative of unscrupulous or unconscientious conduct in filing the Complaint.
Furthermore, as regards the second element under the Policy, the Respondent’s passive holding of the disputed domain name for 13 years from the date of its purchase by the Respondent also suggests the Complainant had reasonable prima facie grounds for establishing the second limb (as well as the first limb) under paragraph 4(a) of the Policy.
The Panel is unable to conclude that the Complainant has met any of the established grounds in support of a finding of RDNH set out in WIPO Overview 3.0, section 4.6. In particular, this is not a proceeding in which it has been shown that the Complainant lacked relevant trade mark rights, or had clear knowledge of the Respondent’s rights or legitimate interests, or clear knowledge of the Respondent’s lack of bad faith.
For the above reasons, the Panel is unable to conclude that the Complaint was brought primarily to harass the Respondent.
The Panel is also unable to conclude that the proceeding was commenced in bad faith (both in general in accordance with paragraph 15(e) of the Rules, and in accordance with RDNH as defined under the Rules).
The Panel therefore declines to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied; and the Panel rejects the Respondent’s request for a finding of reverse domain name hijacking.
Sebastian M.W. Hughes
Presiding PanelistMathias Lilleengen
PanelistGerald M. Levine
Panelist
Dated: July 27, 2021
