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#Datapath .net UDRP a clear example of #domain investor bullshit

ZFBot

The UDRP against the domain Datapath.net demonstrates how some domain investors attempt to bullshit their way through valid trademark claims.

A British company, Datapath Limited, has rights in the DATAPATH mark for graphics cards, capture cards, and video wall controllers. Their trademark registration predates the commercial Internet, circa 1993. The company operates from Datapath.co.uk and they offered $2,000 dollars via Sedo to get the .net.

The Pakistan-based Respondent asked for $20,000 dollars, claiming that they have already accumulated a large amount of expenses for alleged development. Stating that, while putting the domain up for sale at Sedo somehow doesn’t resonate truthful vibes. Sedo is not a provider of “free banners” either, as the Respondent claimed.

In their self-defended statement, the Respondent claimed the following:

Respondent used the sedo.com landing page because it was providing a free banner while other companies use to charge when it used a banner service for the Domain Name. It can remove the banner if that would help Complainant. Respondent is working on getting its services sold through the Domain Name soon.

Complainant reached out to Respondent first with an offer of USD 2,000. Respondent has spent time and money on its business and the website will be up soon. The offer is not worth the time, effort and money it has spent for the business. Respondent only countered with the value that it sees for its business. Respondent can remove the <sedo.com> landing page if that help Complainant’s concern. It doesn’t want to sell its business at a loss. It is not sure why Complainant is reaching out to it when they already own a domain name. It thinks businesses from the United Kingdom prefer “.co.uk” which Complainant already owns. Next would be “.com” which probably is owned by another trademark owner. It is not sure why Complainant want its domain name. There are hundreds of names so they should reserve all the available ones to meet their desires.

This type of ignorant response didn’t sit well with the panelist at the WIPO, who stated the obvious:

The record evidence indicates that Respondent registered the Domain Name well after Complainant had registered rights in the Domain Name. Respondent has not provided any evidence establishing that it or its alleged business has been commonly known by the Domain Name. Respondent admits that it does not have a functional website for its alleged business and insofar as the Domain Name resolves to a webpage with pay-per-click links Respondent is not using it in connection with any bona fide offer of goods or services.

Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption.

Final decision: Transfer Datapath.net to the Complainant; full details of this decision follow.

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Datapath Limited v. Naveed Ahmad
Case No. D2018-2362

1. The Parties

Complainant is Datapath Limited of Derby, United Kingdom, internally represented.

Respondent is Naveed Ahmad of Rawalpindi, Pakistan, self-represented.

2. The Domain Name and Registrar

The disputed domain name <datapath.net> (“the Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by email to the registrar Moniker Online Services, LLC (“Moniker”) a request for registrar verification in connection with the Domain Name. On October 23, 2018, Moniker notified the Center that the Domain Name was pending transfer to the Registrar Namecheap Inc. On October 26, 2018, 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. The Center sent an email communication to Complainant on December 19, 2018 providing the registrant and contact information disclosed by the Registrar, and also requesting Complainant to submit an amendment to the Complaint to address an administrative formality. Complainant filed an amended Complaint on January 4, 2019.

The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2019. An informal Response was filed with the Center on January 31, 2019.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 8, 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 owns Trademark Registration No. UK00001461137 for the DATAPATH mark (“DATAPATH” or the “Mark”) in United Kingdom since November 12, 1993.

Complainant makes and sells graphics cards, capture cards, and video wall controllers under the DATAPATH mark.

Respondent registered the Domain Name on July 3, 2002. The website to which the Domain Name resolves comprises pay-per-click links to products at least some of which are related to the products that Complainant makes. On the landing page it states: “This site is for sale! – Information about hardware” and “This webpage was generated by the domain owner using Sedo Domain Parking. The advertisements provided on this site automatically come from third parties and have no relationship with domain owner or Sedo.” The “www.sedo.com” website is a site for buying, parking and selling domains.

5. Parties’ Contentions

A. Complainant

Complainant has been using the Mark since January 25, 1982, selling to over 60 countries worldwide, including the United States of America and Canada, since the 1990’s. The Domain Name is identical to the Mark.

At first, the Domain Name reverted to the “www.sedo.com” site stating that the Domain Name was for sale. The landing page was updated to provide pay-per-click links to other websites but it still states “buy this domain” which links to <sedo.com>. The key words in those links are activities undertaken by Complainant in the development of products. The links do not relate to any products or services Respondent is offering.

Complainant cannot ascertain if Respondent has an individual name or business that has been commonly known by the Domain Name. Complainant tried to settle this dispute with an offer of USD 2,000. Respondent countered with USD 20,000. Respondent has not explained how the Domain Name is relevant or in use such that its costs or damages would require that amount of money. The use of <sedo.com> to market the Domain Name and the lack of any response to emails, apart from asking USD 20,000, would indicate Respondent is holding the Domain Name only to exploit Complainant and is acting in bad faith.

B. Respondent

“Datapath” is registered by many companies globally not just Complainant. Different websites are in operation using it other than Complainant (e.g., <datapath.com>, <datahpath.io>). Complainant already owns <datapath.co.uk>. Owning a trademark in one location should not be considered a license to kill other online businesses in other parts of the world.

Respondent used the <sedo.com> landing page because it was providing a free banner while other companies use to charge when it used a banner service for the Domain Name. It can remove the banner if that would help Complainant. Respondent is working on getting its services sold through the Domain Name soon.

Complainant reached out to Respondent first with an offer of USD 2,000. Respondent has spent time and money on its business and the website will be up soon. The offer is not worth the time, effort and money it has spent for the business. Respondent only countered with the value that it sees for its business. Respondent can remove the <sedo.com> landing page if that help Complainant’s concern. It doesn’t want to sell its business at a loss. It is not sure why Complainant is reaching out to it when they already own a domain name. It thinks businesses from the United Kingdom prefer “.co.uk” which Complainant already owns. Next would be “.com” which probably is owned by another trademark owner. It is not sure why Complainant want its domain name. There are hundreds of names so they should reserve all the available ones to meet their desires.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in the DATAPATH Mark based on the above-referenced Trademark Registration No.UK00001461137. In fact, Respondent admits that Complainant is a registered owner of the DATAPATH Mark and does not dispute that it has standing to maintain this proceeding.

The Domain Name <datapath.net> incorporates in its entirety the DATAPATH Mark. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. The use of the generic Top-Level (“gTLD”) “.net” does not impact the assessment whether a domain name is identical or confusingly similar to a trademark. See, Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. There is no indication in the record that Complainant has authorized Respondent to use the DATAPATH Mark for any purpose. The record evidence indicates that Respondent registered the Domain Name well after Complainant had registered rights in the Domain Name. Respondent has not provided any evidence establishing that it or its alleged business has been commonly known by the Domain Name. Respondent admits that it does not have a functional website for its alleged business and insofar as the Domain Name resolves to a webpage with pay-per-click links Respondent is not using it in connection with any bona fide offer of goods or services.

Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

With regard to bad faith registration, Complainant’s rights in the DATAPATH Mark are uncontroverted, as is the fact that Respondent registered the Domain Name after Complainant established its rights in the Mark. Furthermore, as indicated above, Respondent has not presented any evidence upon which the Panel can find that it has rights or legitimate interests in the DATAPATH Mark which it chose to use on a webpage with links to products that have some relationship to Complainant’s products. Thus, the Panel concludes that Respondent registered the Mark in bad faith.

Respondent’s use of the Domain Name also constitutes bad faith under the Policy. The Domain Name resolves to a webpage with pay-per-click links intended to attract Internet users for commercial gain by creating a likelihood of confusion with the DATAPATH Mark. Furthermore, Respondent is incorrect in thinking that owning a trademark “in one location” should not permit the trademark owner from prohibiting infringing uses of its mark in a domain name by others in other parts of the world. Other indicia of bad faith use here are the facts that: (1) Respondent admits it has requested USD 20,000 to transfer the Domain Name, which is far more than it cost to register it; and (2) it tried to hide its identity by engaging in attempted cyberflight when put on notice of the present proceeding.

The Panel is mindful of the fact that the Domain Name comprises two descriptive words that could be attractive to other businesses. Under certain circumstances, the Panel could find in Respondent’s favor. Here, however Respondent claims without any evidence to have a business and his website will be “up soon”. Without any evidence that Respondent has a legitimate business, the Panel infers an intent to target third-party trademarks in this case, that of the Complainant.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <datapath.net> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: February 15, 2019


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