The Complainant is Uovo Art LLC of Long Island City, New York, United States of America (“United States”), represented by Verna Law, United States.
The Respondent is Mira Hold, Mira Holdings, Inc. of Minneapolis, Minnesota, United States, represented by John Berryhill, Ph.d., Esq., United States.
The disputed domain name <uovo.com> is registered with WorthyDomains LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2016. On February 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2016, 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 February 8, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on February 13, 2016.
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 the Respondent of the Complaint, and the proceedings commenced on February 15, 2016. The Center received a communication from a third party on February 15, 2016. The Center received a further communication from the same third party on February 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2016. On March 3, 2016, the Respondent filed a request for extension of the Response due date pursuant to paragraph 5(b) of the Rules. The Response due date was accordingly extended to March 10, 2016. The Response was filed with the Center March 10, 2016.
The Center appointed William R. Towns, Thomas D. Halket and Richard G. Lyon as panelists in this matter on April 4, 2016. 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.
The Complainant is New York based company specializing in the transportation and storage of artworks. The Complainant has registered the trademarks UOVO, UOVO FINE ART STORAGE, and UOVO FASHION STORAGE (collectively the “UOVO marks”) with the United States Patent and Trademark Office (“USPTO”). UOVO was registered on December 9, 2014. UOVO FINE ART STORAGE and UOVO FASHION STORAGE were registered on November 19, 2013. The Complainant operates two art storage facilities in the New York City metropolitan area, and maintains a website providing information about its services and facilities at “www.uovo.org”. “Uovo” is an Italian word that means “egg” in English.1
The disputed domain name <uovo.com> was registered with the Registrar on September 9, 2015. At the time the Complaint originally was filed on February 3, 2016, the registrant of the disputed domain name according to the Registrar’s WhoIs records was HugeDomains.com LLC.2 In response to the Center’s request for registrar verification, the Registrar on February 5, 2016 advised that HugeDomains.com LLC was not the registrant and that the “true and accurate registrant” was Mira Hold.
The disputed domain name currently resolves to a webpage on which the disputed domain name is being offered for sale through Escrow.com for USD 125,000.
The Complainant submits that the disputed domain name is confusingly similar and virtually identical to its UOVO marks. The Complainant asserts ownership of a family of UOVO marks comprised of the three registered UOVO marks and two additional common law marks, UOVO ART STORAGE and UOVO WINE STORAGE. According to the Complainant, it has strong rights in the UOVO family of marks and has made extensive use of the marks since 2013.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant observes that the Respondent registered the disputed domain name after the Complainant had established rights in its family of UOVO marks, and that the Respondent has not been commonly known by the disputed domain name. The Complainant asserts that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, nor utilized the disputed domain name for any legitimate business purpose, nor made a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Complainant submits that the Respondent wrongfully appropriated the Complainant’s UOVO mark in order to lure Internet users to a website on which the Respondent is offering the disputed domain name for sale.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent had constructive notice of the Complainant’s family of UOVO trademark registrations when registering the disputed domain name. According to the Complainant, the Respondent’s use of UOVO as an auction point intentionally misleads Internet users to believe that there is a connection between the disputed domain name and the Complainant or the Complainant’s goods or services offered under its UOVO marks.
The Complainant further submits that the Respondent has an obligation under paragraph 2 of the Policy to ensure that the registration of the disputed domain name does not infringe upon the rights of others, and that the Respondent cannot shield its conduct by closing its eyes as to whether the domain name being registered is identical or confusingly similar to a third party’s mark. The Complainant reiterates that it has strong rights in the UOVO marks, and that even a cursory search by the Respondent prior to the registration of the disputed domain name would have disclosed the Complainant’s family of UOVO marks.
The Respondent submits that the disputed domain name consists of a dictionary word – “uovo” – an Italian word that translates into English as “egg”. The Respondent asserts that “uovo” is primarily and predominantly associated with its common or dictionary meaning, that the Complainant’s use of the word “uovo” is limited by its trade, and that “uovo” is by no means exclusively or distinctively associated with the Complainant.
The Respondent maintains that while “uovo” is not descriptive of the Complainant’s services, the Complainant’s mark most likely was selected based on the connotative value of the generic word, explaining that artwork, like eggs, must be delicately handled. According to the Respondent, “uovo” as a four-letter word identifying a staple food product has substantial commercial value independent of the Complainant’s mark, as reflected by secondary markets for domain names. The Respondent denies any knowledge of the Complainant’s mark, and represents that no use had been made of the disputed domain name in any way related to the Complainant’s art storage services.
The Respondent acknowledges that the first element of the Policy is essentially a standing requirement, but submits that UOVO is the only one of the Complainant’s asserted marks that could be considered confusingly similar to the disputed domain name, dismissing the Complainant’s UOVO-formative marks as typographically much longer and therefore “makeshift”. The Respondent further asserts that the Complainant has been less than clear in claiming to have made a “first use” of its marks in February 2013. According to the Respondent, the Complainant submitted to the USPTO as a specimen of use a screenshot of the Complainant’s website, on which the Complainant represented it would be “opening in NYC 2014.”
The Respondent submits that the Complainant acquired the domain name <uovo.org> from Rarenames in late 2012 or early 2013, the same time frame in which the Complainant first applied to the USPTO to register its UOVO-formative marks. According to the Respondent, this demonstrates the Complainant’s knowledge of the commercial value of the “uovo” as a generic domain name predating the Complainants registration and use of its UOVO marks. The Respondent asserts that the Complainant would have known at that time that the disputed domain name <uovo.com>, which was already registered, would be of even greater commercial value than <uovo.org>.
The Respondent submits that it has rights or legitimate interests in the disputed domain name because the Respondent’s “commercial expectation interest” for the disputed domain name is not premised on the perceived value of the Complainant’s trademark, but rather based on a reasonable expectation that the value of the disputed domain name is derived from its value as a dictionary word. Relying on OHIM data, the Respondent submits there are more than 700 trademark registrations in which “uovo” is a constituent component, including many registrations in which “uovo” is a descriptive component.
According to the Respondent, the foregoing demonstrates that “uovo” has a broad range of commercial uses, and is valuable as a domain name because it is a generic four-letter word, with legitimate commercial value in a descriptive or generic sense. The Respondent cites a number of UDRP panel decisions as recognizing the legitimate commercial value of domain names consisting of short generic words.
The Respondent denies the Complainant’s allegations that the disputed domain name was registered and is being used in bad faith. The Respondent explains that a four-letter generic word has been registered and has been posted for general sale to any and all who might wish to negotiate its purchase. The Respondent notes that the disputed domain name has not been used for any purpose relating to art storage or warehousing services, and that the Respondent has not targeted the Complainant nor attempted to pass itself off as the Complainant. The Respondent submits that no attempt has been made to tarnish the Complainant or to exploit or harm the Complainant’s goodwill associated with the operation of an art storage service. The Respondent denies any attempt to divert or capitalize on customers seeking the Complainant’s art storage service.
The Respondent submits that the Complainant has failed to come forward with any evidence from which bad faith intent might be inferred. The Respondent denies having actual knowledge of the Complainant’s marks when registering the disputed domain name. Even assuming arguendo that the Respondent had actual notice of the Complainant’s claims, the Respondent submits that the disputed domain name is a generic word consisting of four letters that is not uniquely, exclusively, or famously associated with the Complainant. The Respondent reiterates that no attempt has been made to target the Complainant or to exploit or profit from any goodwill associated with the Complainant’s marks. Rather, the Respondent submits that the registration and use of the disputed domain name is entirely consistent with a good faith belief by the Respondent that the value of the disputed domain name derives from its descriptive qualities and its attractiveness as a generic four-letter word.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that proof of a respondent's lack of rights could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing, with the ultimate burden of proof remaining with the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1; see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s registered UOVO and UOVO-formative marks, in which the Complainant has demonstrated rights.3 In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
UOVO is the dominant element of the Complainant’s marks and is incorporated in its entirety in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s UOVO and UOVO-formative marks. The disputed domain name could be considered as identical to the Complainant’s UOVO mark when the generic Top-Level Domain (“gTLD”) “.com” is disregarded.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel considers that the Complainant has made a prima facie showing in this case. The disputed domain name is confusingly similar to the Complainant’s UOVO marks, all of which were registered prior to the Respondent’s registration of the disputed domain name. The disputed domain name resolves to a website on which the domain name is offered for sale for USD 125,000.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent asserts rights or legitimate interests in the disputed domain name on the grounds summarized above in Section 5.B. It appears to the Panel that the Respondent’s business model involves trading in domain names, wherein the Respondent seeks to acquire domain names of value, which may then be held or offered for sale to the public. The Respondent maintains that it seeks to acquire generic or descriptive domain names, and in particular short generic domain names that may attract a premium price when auctioned in the domain name secondary market.
A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive word, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
The Respondent claims not to have been aware of the Complainant’s marks when registering the disputed domain name. Prior UDRP panel decisions have held that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.5 See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The Panel notes that these decisions involved automated bulk registrations of domain names in which there was no evidence that attention was given to third-party rights at the time of the registrations.
In the instant case, the Panel considers it likely that a cursory search by the Respondent prior to registering the disputed domain name would have disclosed the existence of the Complainant’s marks. The absence of such a search without more, however, does not mean that the Respondent could not have formed a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics. The Policy was never intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. See also National Trust for Historic Preservation v. Preston, supra.
Accordingly, in cases where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although such knowledge may be a relevant consideration. The larger question is whether, in light of the totality of facts and circumstances of a given case, it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s mark. Where there is evidence that a respondent has targeted the complainant or the complainant’s mark – sought primarily to benefit from the mark’s value – the attendant circumstances may support an inference that the respondent was aware of the complainant’s rights.
The facts and circumstances of this case, however, militate against a finding that the Respondent has targeted the Complainant and the Complainant’s UOVO marks. There is no dispute that “uovo” is the Italian word meaning “egg”, a fact that is not contested by the Complainant and is expressly acknowledged in the Complainant’s United States registrations for the UOVO marks. There is no substantial indication in the record that the Complainant’s UOVO marks – registered in late 2013 and early 2014 – have become well known even in the niche market the Complainant serves, let alone among the general public. Further, the Complainant’s storage facilities all appear to be located in the New York City metropolitan area.
The Respondent has presented a plausible claim that the disputed domain name was registered based on its attractiveness as a dictionary word or descriptive term. It is not a violation of the Policy to register a domain name and offer it for sale to the public where such use is not seeking to profit from and exploit the trademark of another. See, e.g., Think Service, Inc. v. Juan Carlos aka Juan Carlos Linardi, WIPO Case No. D2005-1033. The Respondent’s asking price for the disputed domain name of USD 125,000 does not in and of itself compel a conclusion that the Respondent is attempting to trade on the goodwill associated with the Complainant’s mark. The Respondent has made a plausible showing, supported by some evidence, that domain names consisting of four letter generic words also may be valuable commodities in the domain name secondary market.
In view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. However, it is paramount that UDRP panels decide cases based on the limited scope of the Policy. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain name in bad faith. Notwithstanding that the Complainant’s registration of the UOVO marks preceded the Respondent’s registration of the disputed domain name, the Complainant has not shown that the Respondent more likely than not registered the disputed domain name with bad faith intent to exploit or profit from the Complainant’s trademark rights. As discussed above, the Respondent has asserted a plausible good faith basis for the Respondent’s registration of the disputed domain name. No convincing evidence has been offered by the Complainant that the Respondent’s proffered explanation is a pretext for cybersquatting.
As noted earlier, the Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. See also National Trust for Historic Preservation v. Barry Preston, supra.
Accordingly, for the reasons summarized above, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
William R. Towns
Presiding Panelist
Thomas D. Halket
Panelist
Richard G. Lyon
Panelist
Date: April 18, 2016
1 The Complainant acknowledges this in its United States registrations for the UOVO marks. Under United States trademark law, marks consisting of foreign words are translated into English to determine genericness, descriptiveness, likelihood of confusion, and other similar issues. This is known as the doctrine of foreign equivalents, and is premised on the view that many members of the American public, even those having only a rudimentary acquaintance with a foreign language, are likely to understand the significance of certain foreign language terms. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-83 (TTAB 1983).
2 HugeDomains.com is a domain name reseller that reportedly is affiliated with the Registrar. HugeDomains.com advertises that it provides privacy protection services for its domain name purchasers. Whether HugeDomains.com was acting as a privacy protection provider at the time of the filing of the Complaint has not been addressed by either party.
3 The Panel has not considered for purposes of the first element of the Policy the unregistered UOVO-formative marks in which the Complainant has asserted common law rights. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Relevant evidence of such rights includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The evidence of common law rights submitted by the Complainant is not particularly strong. As the Complainant has met its burden under the first element of the Policy based on registration rights, consideration of the Complainant’s assertion of common law rights is unnecessary.
4 See WIPO Overview 2.0, paragraph 1.2.
5 Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” (emphasis added).