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#Belgian company went after #Greenmood .com but its #UDRP failed

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Greenmood.com, a domain registered in 2009, was challenged via the UDRP process at the WIPO by a Belgian company.

Operating from the matching .BE domain, Sadig Alakbarov, stated that his company Pack & Co S.P.R.L. offers “stabilized plant products” under the GREENMOOD trademark “throughout the European territory.”

The Respondent stated that there was an Australian company formed, and an Australian trademark GREEN MOOD obtained, in connection with his acquisition of the Domain Name. They had spent about $2,000 dollars to acquire the domain in the aftermarket, and when the Complainant approached them, asked for $6,000 dollars at a minimum.

The sole panelist at the WIPO stated that the delta between the acquisition price and selling price was not unreasonable:

“…the Panel cannot conclude that asking for USD 6,000 is per se excessive in this instance. Respondent had paid USD 1,995 for it, and had taken some steps toward launching a business in conjunction with the Domain Name.”

Final decision: deny transfer to the Complainant. Full details of the decision for Greenmood.com follows:

Sadig Alakbarov v. Yuxue Wang
Case No. D2019-2253

1. The Parties

Complainant is Sadig Alakbarov, Belgium, represented by Buyle Legal, Belgium.

Respondent is Yuxue Wang, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <greenmood.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 September 17, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 18, 2019, the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on September 23, 2019. On September 24, 2019, Respondent sent an informal email communication to the Center. On September 26, 2019, Complainant filed an amendment to the Complaint. On September 27, 2019, Respondent sent an email communication to the Center.

The Center verified that the Complaint together with the amended Complaint and the amendment to 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2019. The Response was filed with the Center on October 23, 2019. On October 29, 2019, Complainant submitted a supplemental filing. The Panel, in its discretion, read this supplemental filing, though it added little to the issues joined in this case.

The Center appointed Robert A. Badgley as the sole panelist in this matter on November 12, 2019. 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

Complainant states that “the brand ‘Greenmood’ was registered with the EUIPO [European Union Intellectual Property Office] under the number 017487604” on August 3, 2018. This trademark was applied for on November 16, 2017. The mark is stylized; it is not a mere word mark. (This was not mentioned in the Complaint.)

According to Complainant, his company Pack & Co S.P.R.L. offers “stabilized plant products” under the GREENMOOD trademark “throughout the European territory.” There is no information in the pleadings or annexes to indicate when Complainant first used the GREENMOOD mark in commerce. The Panel conducted some basic research and found the website which appears to be Complainant’s main website, located at “www.greenmood.be”. (Complainant did not annex to his Complaint any screenshots or other content from his website.) At the website, Complainant’s business is described as a “young Belgian company founded in 2014.” Again, it is not known when Complainant started using the mark in commerce.

Further, there is no information, either alleged or provided by Complainant, about the magnitude of Complainant’s sales, any third-party acknowledgment of the GREENMOOD products (such as media reports), or anything else that would indicate the degree to which the GREENWOOD mark is known by consumers in Europe or on other continents.

The Domain Name was registered on August 8, 2009. The Domain Name does not appear to have ever resolved to a live website.

Respondent, a resident of Australia, states that he bought the Domain Name on June 18, 2012 for USD 1,995. At some point thereafter, Respondent transferred the Domain Name to his son, James Wang, who owned it until late 2017, when he transferred it back to his father (Respondent). No documents are provided to substantiate these assertions.

Respondent states that there was an Australian company formed, and an Australian trademark GREEN MOOD obtained, in connection with his acquisition of the Domain Name. Respondent alleges:

“The trademark ‘Green mood’ is Registered on Jan 11 2014, the first owner is GreenMood Pty Ltd. Which was a company same address to me. I built it to sale [sic] food from Australia to china.”

A screenshot of an Australian trademark registration certificate listing this mark, showing the owner as GreenMood Pty Ltd., is included with the Response.

Respondent explains further, with respect to the “family business” he allegedly planned to launch under the Australian trademark GREEN MOOD, “because some reason, we delayed the plan, the trademark be transferred to my wife Yanlu Bo, the same address as me.”

Between August 8, 2017 and August 12, 2017, Complainant initiated an email exchange with Respondent’s son James Wang (who at that time was the owner of the Domain Name). Complainant wrote (after the salutation “Hi James”):

“I’m writing you because I need to know if you sell the domain name www.greenmood.com. I hope receiving a feedback from you.”

There was no reference in any of the emails over this five-day period to any trademark rights. In any event, Respondent’s son James responded on August 8, 2017, stating that he was “open to sell” and asking for an offer. In an email omitted from Complainant’s annexes to the Complaint, Complainant conveyed an offer of USD 500.

James responded on August 11, 2017, stating that he was not in a rush to sell the Domain Name, and that he was hoping for an offer “much higher” than USD 500. On August 11, 2017, Complainant responded by email:

“I can understand of course. You are a seller so please advice [sic] your offer. So I can think about it.”

Again, Complainant said nothing about his owning trademark rights in GREENMOOD.

On August 12, 2017, James stated that he was seeking more than USD 6,000. This response was after an email exchange between Respondent and his son James, wherein the latter had asked the former about the Domain Name. Respondent told James that he had paid “about” USD 2,000, and therefore James had “better sell it” for USD 5,000 or more. Respondent adds that he had not given up on the business for which he had formed a company and registered the Australian trademark (now owned by his wife), and that he had spent “much money relate to the bissiness [sic].”

In July 2019, Complainant’s counsel sent a letter to the Registrar, asserting trademark rights and seeking assistance in obtaining the Domain Name. The Registrar stated that it was in no position to intervene, and referred Complainant’s lawyers to the UDRP.

5. Parties’ Contentions

A. Complainant

Complainant asserts that he has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent disputes Complainant’s claims, and asserts that it had a legitimate basis for registering the Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

The Panel concludes that Complainant has rights in the mark GREENMOOD a trademark registration demonstrated in the record. The Panel also finds that the Domain Name is identical to that mark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Panel need not consider or decide this issue, given its decision on the “bad faith” issue below and the fact that a successful complaint under the UDRP must establish all three elements of the UDRP.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Complainant has failed to establish on this record that Respondent registered and used the Domain Name in bad faith.

Above all, there is no basis from this record on which to find that Respondent targeted Complainant or its GREENMOOD mark. Respondent acquired the Domain Name in 2012, two years before Complainant was formed and at least two years before Complainant used that mark in commerce. There is no evidence that Complainant’s mark is known at all in Australia. Complainant’s mark was not registered until 2018, and only in the European Union.

Further, Respondent provided some evidence – the Australian trademark registration of GREEN MOOD – of his efforts to use the Domain Name in connection with a bona fide offering of goods or services. Although Respondent’s story of his “family business” and the various transfers of the Domain Name and the mark to and from his family members is not well documented or articulated, there appears to be nothing nefarious afoot. Rather, it looks like Respondent had a genuine business idea, took some steps to pursue it, and then never followed through with it.

Under these circumstances, there is simply no firm basis on which to conclude that Respondent more likely than not had Complainant’s mark in mind – even during the August 2017 email exchanges when son James owned the Domain Name – when registering the Domain Name and transferring the Domain Name within his family. Nothing in the record shows that the Australian Respondent was aware of the Belgian Complainant’s European Union trademark, which mark Complainant did not even mention during the 2017 discussions with James.

The Panel also rejects Complainant’s argument that Respondent’s “passive holding” of the Domain Name for several years amounts to bad faith under the reasoning of Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Telstra involved a famous trademark, which cannot be said of Complainant’s mark here.

Finally, the Panel rejects the argument that Respondent’s son James asking for USD 6,000 amounts to bad faith under the above-quoted Policy paragraph 4(b)(i). An apparently high asking price is not necessarily determinative of bad faith. Here, the circumstances do not suggest that Respondent’s primary intent in registering the Domain Name was to sell it for a profit. Respondent never (as far as the record shows) put the Domain Name up for sale, and it was Complainant who initiated the discussion of a sale. Further, the Panel cannot conclude that asking for USD 6,000 is per se excessive in this instance. Respondent had paid USD 1,995 for it, and had taken some steps toward launching a business in conjunction with the Domain Name.

In sum, Complainant has not established Policy paragraph 4(a)(iii). The Complaint fails.

7. Decision

For the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist
Date: November 18, 2019


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