Reverse #Domain Name Hijacking finding in #ink123 .com UDRP

The Respondent in the UDRP case against the domain 123ink.com was avenged, after a three member panel at the WIPO delivered a finding of Reverse Domain Name Hijacking.

Registered in 1999, the domain 123ink.com consists of a numerical prefix common with commercial designations indicating quality or speed. The “ink” part is a common dictionary word. The Complainant’s claimed marks do not predate the domain’s registration date.

The Complainant in this UDRP is Digital Revolution B.V. of Nederhorst den Berg, Netherlands, a company that operates from 123inkt.nl. They also have 123inkt.com.

The Respondent retained prominent IP attorney John Berryhill as their council, who stated:

The Respondent submits that the number sequence “123” is frequently used in commercial designations to denote simplicity or ease and the word “ink” represents the goods advertised by the parties. It says that the disputed domain name was acquired by the Respondent to advertise the sale of ink and related goods in English, prior to the existence of any evidence of commercial reputation or trade or service mark rights proffered by the Complainant, who operates a website for customers in the Netherlands and Belgium. It says that the phrase “123 ink” is widely used in various languages and close variations by unrelated parties around the world to advertise the sale of ink and related products.

The WIPO panelists pointed out that there is zero indication of the Respondent’s alleged bad faith in registering or using the domain, which predates the Complainant’s mark. In delivering a finding favoring the Respondent, they also slapped the Complainant with a finding of Reverse Domain Name Hijacking.

Full details on this decision follow:

Digital Revolution B.V. v. Contact Privacy Inc. Customer 0145554612 / Onyx Domain Solutions
Case No. D2018-2949

1. The Parties

The Complainant is Digital Revolution B.V. of Nederhorst den Berg, Netherlands, represented by de Merkplaats B.V., Netherlands.

The Respondent is Contact Privacy Inc. Customer 0145554612 of Toronto, Canada / Onyx Domain Solutions of Danielsville, Pennsylvania, United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States.

2. The Domain Name and Registrar

The disputed domain name <123ink.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2018. On December 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2018, the Registrar 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 January 7, 2019, 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 amendment to the Complaint on January 11, 2019.

The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on January 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2019. Upon request of the Respondent, the due date for Response was automatically extended to February 9, 2019, pursuant to the Rules, paragraph 5(b). The Response was filed with the Center February 9, 2019.

The Center appointed Alistair Payne, Charles Gielen, and Richard G. Lyon as panelists in this matter on March 6, 2019. 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

The Complainant has since 2000 operated a webshop for printer supplies at the domain name <123inkt.nl>. It registered this domain name on March 23, 2000. It holds a trade name for “123inkt” that was filed with the Chamber of Commerce and it owns a European trade mark registration 014573356 for the word mark 123INKT registered on February 1, 2016 and Benelux logo mark registration 0913712 for 123INKT.NL which was registered on April 10, 2012.

The disputed domain name was originally registered on September 1, 1999 but was only acquired by the Respondent in 2009. It resolves to a pay-per-click parking page that features links to third party ink cartridges, including “HP Ink” and “Lexmark Printer Ink”.

5. Parties’ Contentions
A. Complainant

Since starting its business in 2000, the Complainant submits that it has developed under the 123INKT.NL name and mark a sizeable business with more than 300 employees and 2,000,000 customers and has won various awards, including in 2010, 2015 and 2016 the “Best Webshop of the Netherlands” award. It says that it has also featured in the list of 100 largest online shops in the Netherlands based on an estimated turnover of EUR 75 million. The Complainant says that the name “123inkt.nl” has received considerable media coverage as a result of promotion in magazines, radio spots, TV commercials, online banner campaigns, at sports events, in cars and on product packaging.

The Complainant submits that the disputed domain name differs from its European trade mark registration for 123INKT by only one letter and as a consequence is confusingly similar to the disputed domain name.

The Complainant submits that it has been trading under the name “123inkt.nl” for more than 18 years and is generally known by that name. It says that the Respondent has no written permission or authority to use the disputed domain name. It notes that a Google search of the disputed domain name does not show any result that belongs to the Respondent and it says that the sponsored link of 123inkt.nl is automatically displayed on the top by Google. Further, it says that the Respondent has no reputation in the disputed domain name or in relation to any name that resembles it.

The Complainant submits that the fact that the disputed domain name resolves to a parking page that contains pay-per-click links to “Hp Ink Cartridges”, “Hp Ink”, “Hp Ink Cartridge”, “Hp Printer Ink”, and “Lexmark Printer Ink” which are all identical products of competing printer and printer supply manufacturers demonstrates that the Complainant is using the disputed domain name to trade off the goodwill and reputation that attaches to them and to confuse Internet users into reaching a parking page that features third party sponsored links.

B. Respondent

The Respondent submits that the number sequence “123” is frequently used in commercial designations to denote simplicity or ease and the word “ink” represents the goods advertised by the parties. It says that the disputed domain name was acquired by the Respondent to advertise the sale of ink and related goods in English, prior to the existence of any evidence of commercial reputation or trade or service mark rights proffered by the Complainant, who operates a website for customers in the Netherlands and Belgium. It says that the phrase “123 ink” is widely used in various languages and close variations by unrelated parties around the world to advertise the sale of ink and related products. At no time in the Respondent’s decade of registration and use of the disputed domain name has the Respondent passed itself off as a Dutch or Belgian retail concern. Rather, the Respondent has consistently associated the disputed domain name with the ordinary connotations of which this two-word combination is widely used and commonly associated.

The Respondent submits that the Policy is limited to “trade or service mark claims” and that the Complainant has made a claim in this case arising from a trade name and adds that the Complainant’s reference to having registered the domain name <123inkt.nl> corresponding to its trade name does not establish a trade or service mark right. The Respondent notes that the Complainant’s website is offered to consumers of the Netherlands and of Belgium using <123inkt.nl> and <123inkt.be> and that the awards it has won and the search advertising that it has bought appears to relate to those jurisdictions. It says that the Complainant has provided no evidence of trade or service mark rights prior to its registration of the two European trade mark registrations noted above and that in any event its earliest claim appears to be 2010 which is after the acquisition of the disputed domain name by the Respondent in 2009. As a result, the Respondent submits that the Complainant has demonstrated ownership of trade or service marks which are years junior to the Respondent’s registration and use of the disputed domain name.

As far as rights and legitimate interests are concerned the Respondent says that it purchased the disputed domain name in a transaction in December 2009 and has subsequently used it for 10 years in association with advertising the subject of which is suggested by the disputed domain name and that the formula of the disputed domain name is widely used by third parties in other domain names, with which the Respondent appears to have no issue.

It says that the use of designations such as “123”, “ABC”, etc., and the name of some commodity is a common trope dating back to the publication of printed directories of goods and service, such as “yellow page” telephone books, in which various such formulations were used to obtain the telephone book equivalent of “search-ranking” by gaming alphabetic ordering systems. Further, says the Respondent, the designation “123” resonates with the common expression “as easy as one, two three” frequently used in common parlance and in advertising to express ease or for convenience. The Respondent argues that any commodity good appended to “123” can be a registered domain name having some relationship to those goods, as embodied in such domain names as <123car.com>, <123pet.com>, <123movies.com>, <123hotel.com>, and <123party.com> at which such domain names are used respectively to purvey cars, pet products, movies, hotels and party goods.

The Respondent says that it does not deal in the Dutch language and did not know the Dutch word for “ink” at the time of its acquisition of the disputed domain name. It notes that the combination of “123ink” is widely used around the world for advertising ink and related goods, including in countries such as Canada (<123ink.ca> and <123encre.ca>) and Spain (<123tintas.es>). It has provided evidence that a Google search conducted using the global version of google.com discloses 286,000 results amongst which the Complainant’s site is not at all notable or prominent. The Respondent notes that Google search advertising that the Complainant’s paid advertisements show up in the Netherlands amongst sponsored results demonstrates that the Complainant’s reputation is limited to a well-defined geographic area and a language which is not widely spoken in the United States. In summary, the Respondent says that the Complainant has not shown any reason to conclude that the Respondent’s use of the disputed domain name, being a non-distinctive and non-exclusive term that is senior to the Complainant’s claim has been in any way illegitimate in relation to trade mark rights that the Complainant has not claimed until many years later.

The Respondent submits that the Complainant has not advanced any argument as to how the Respondent registered the disputed domain name in bad faith in 2009 in relation to the Complainant’s two trade mark registrations which would not exist until 2012 and 2016 respectively. The Respondent notes also that the evidence submitted by the Complainant does not support the Complainant having a reputation in the Complainant’s claimed mark in 2009 such that the Respondent, based in the United States would, could or should have known about the Complainant’s mark and business in the Netherlands and suggests that it would be much more likely that the Respondent would seek to target the Canadian business operated from <123ink.ca> because that country has a market twice the size of that of the Netherlands and is a neighbour to the United States. In short, the Respondent submits that there is nothing to suggest that the Respondent targeted the Complainant with intent and the Respondent’s use of the mark has purely been in relation to the usual roster of ink and printer supplier manufacturer’s products in a similar manner to the Complainant and it says that it is fully entitled to use the disputed domain name in this respect. As a result, the Respondent submits that it has not registered or used the disputed domain name in bad faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns European trade mark registration 014573356 for the word mark 123INKT which was registered on February 1, 2016. It has also shown that it owns Benelux logo mark registration 0913712, which includes the word mark 123INKT.NL as the dominant element and this mark was registered on April 10, 2012. On comparing the disputed domain name and the word mark 123INKT it is apparent that before the “.com” element, the disputed domain name differs only in that it does not include the letter “t”. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark rights and that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant submits under this head that it has been trading under the name 123inkt.nl for more than 18 years and is generally known by that name. It says that the Respondent has no written permission or authority to use the disputed domain name. It notes that a Google search of the disputed domain name does not show any result that belongs to the Respondent and it says that the sponsored link of 123inkt.nl is automatically displayed on the top by Google. Further, it says that the Respondent has no reputation in the disputed domain name or in relation to any name that resembles it and accordingly has no rights or legitimate interests in the disputed domain name.

The fundamental difficulty with the Complainant’s case under this element of the Policy and also under Part C below, is that the Respondent acquired the disputed domain name in 2009 which is approximately three years prior to the date of the Complainant’s first trade mark registration. Although the Complainant registered its domain name <123inkt.nl> in 2000 and has submitted evidence to support its claim that it has subsequently developed a substantial business and reputation in the Netherlands, this evidence is in respect of the period after 2009 and there is nothing to suggest that the 123INKT.NL mark had developed a reputation elsewhere and in particular in the United States, such that the Respondent could or should have been aware of it when it acquired the disputed domain name in 2009.

The Panel notes the evidence submitted by the Respondent that the basic formula “123ink” whether in English or in other languages appears to be in common use in a number of countries for printer ink supply websites and that searches using the global version of google.com discloses 286,000 results amongst which the Complainant’s site is not at all notable or prominent. That the expression “123ink” appears to be in common usage across different jurisdictions is indicative of the largely national nature of these ink and printing product supply businesses. The fact that the Complainant’s paid advertisements show up in the Netherlands amongst sponsored results is further evidence that the Complainant’s business and reputation is limited geographically.

Overall and as further discussed below, there is nothing to suggest that the Respondent has sought to target the Complainant, or has otherwise acted illegitimately or in bad faith, whether at the time of acquisition of the disputed domain name or subsequently. The Respondent has used the disputed domain name descriptively to resolve to a parking site featuring sponsored links to different brands of printer ink and related supplies. It appears to the Panel that these products are essentially amongst the range of printer ink and printing supply products produced by large manufacturers, much of the same sort as are sold by the Complainant through its website or by other suppliers of printer ink and products from third party websites such as those at <123ink.ca>, <123encre.ca> and <123tintas.es>. The Respondent is therefore selling essentially the type of goods which match an ordinary understanding of the disputed domain name. It therefore cannot be said that the Respondent is illegitimately seeking to target the Complainant.

For these reasons the Panel finds that the Complainant has not made out a case, as is required under this element of the Policy, that the Respondent has no rights or legitimate interests in the disputed domain name and as a result the Complaint fails under this element of the Policy.

C. Registered and Used in Bad Faith

As discussed under Part B above, the Respondent acquired the disputed domain name in 2009 which is approximately three years prior to the date of the Complainant’s first trade mark registration. As further noted above there is there is nothing in the record to suggest that the 123INKT.NL mark had developed a significant reputation in the Netherlands or Belgium by 2009, or that it had done so elsewhere and in particular in the United States, such that the Respondent could or should have been aware of it when it acquired the disputed domain name in 2009.

There is also nothing else on the record to suggest that the Respondent set out to target the Complainant. Notably, the Respondent’s descriptive use of the disputed domain name since registration to resolve to sponsored parking site with links to sites offering third party ink and related products does not reveal an intention to target the Complainant. The third-party products offered are mainly of the same range as is offered either on the Complainant’s or on equivalent “123ink” sites across jurisdictions and there is no evidence before the Panel to suggest that the Respondent’s site targets the Complainant.

Accordingly, the Panel finds that the disputed domain name has not been registered or used in bad faith and the Complaint also fails under this element of the Policy.

7. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Panels have found that “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a Panel may make a finding of RDNH” Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668citing Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598. The Complaint in this case is based upon the creation date of the disputed domain name in 1999, a year before even an allegation that the Complainant had started an active business and was thus doomed to fail on its face.

In this case the Complainant’s registered trade mark rights were granted after the Respondent’s acquisition of the disputed domain name. There is no evidence before the Panel that would support a finding that by that date the Complainant had enjoyed such a substantial reputation as a result of the use of its unregistered 123INKT mark or domain name, that the Complainant enjoyed protectable unregistered rights in its mark. As discussed above, there is also nothing to suggest that either before 2009 or since that time, that the reputation attaching to the Complainant’s mark and to the disputed domain name extended beyond the Netherlands or Belgium to the United States where the Respondent is based. As a result, the Panel finds that it was impossible from the outset for the Complainant to show that the Respondent had registered the disputed domain name in bad faith as required under the third element of the Policy. The Complainant has thus ignored or disregarded firmly settled Policy precedent by proceeding as it did. This is a separate ground for a finding of abuse, see Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653; Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc, supra.
In these circumstances and considering that the Complainant was professionally advised, the Panel is prepared to make a finding of reverse domain name hijacking in this case.

8. Decision

For the foregoing reasons, the Complaint is denied.

Alistair Payne
Presiding Panelist

Charles Gielen
Panelist

Richard G. Lyon
Panelist
Date: March 17, 2019

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