The Complainant is Percipient, LLC of Chicago, Illinois, United States of America (“United States” or “U.S.”), represented by Cozen O’Connor, United States.
The Respondent is Admin of Daegu, Republic of Korea.
The disputed domain name <percipient.com> (“Disputed Domain Name”) is registered with Inames Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
On February 16, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On February 17, 2016, the Complainant requested for English to be the language of the proceeding. On February 21, 2016, the Respondent requested for Korean to be the language of the proceeding.
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 proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Response was filed with the Center on March 13, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 25, 2016. 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.
The Complainant, Percipient, LLC is a U.S. e-discovery and legal technology company focused on providing managed legal discovery document review. The Complainant registered and owns the mark PERCIPIENT for “Litigation support services, namely, providing electronic discovery and managed document review” in Class 45 which was filed on February 6, 2014, registered on January 5, 2016, and used by the Complainant in commerce in connection with the claimed services at least as early as June 1, 2014 under Registration No. 4882145. The Complainant also registered and uses the domain name <percipient.co> to host its main corporate website.
The Disputed Domain Name was first registered on June 30, 2011. Prior to the Complainant’s establishment of its rights in the PERCIPIENT mark in connection with its e-discovery and legal technology services, the website of the Disputed Domain Name contained sponsored links which were not related to the Complainant’s services. Those links provided the Respondent with click-through revenue. However, after the Complainant’s business commenced, the Respondent started to add links with words such as “e-discovery” and “legal” which were identical to descriptions of the Complainant’s services, and these links led to the Complainant’s competitors.
The Complainant contends that the Disputed Domain Name should be transferred to the Complainant because:
1) the Disputed Domain Name is identical to Complainant’s registered service mark PERCIPIENT. Specifically, the Complainant contends that it has provided its electronic discovery services to consumers in the legal field in connection with its PERCIPIENT mark for nearly two years and counts among its clients in-house legal departments and law firms of varying sizes, and that the Disputed Domain Name contains the Complainant’s service mark in its entirety;
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the PERCIPIENT mark. The Respondent’s website at the Disputed Domain Name contains links that lead to the Complainant’s competitors and other companies in the same business as the Complainant; the Respondent has solely used the Disputed Domain Name in connection with a commercial link service designed to lure Internet users and divert them to other commercial sites, which is not a bona fide offering of legitimate goods or services; and
3) the Disputed Domain Name was registered and is being used in bad faith. The PERCIPEINT brand achieved significant goodwill and consumer recognition in the field of e-discovery and legal technology services before Respondent started adding links with names such as “discovery” and “legal” in the website of the Disputed Domain Name. The Complainant contends that before the Complainant’s establishment of its rights in the PERCIPIENT mark in connection with its e-discovery and legal technology services, the website of the Disputed Domain Name contained some sponsored links which were not related to the Complainant’s services. Those links simply provided the Respondent with click-through revenue. However, after the Complainant’s business commenced, the Respondent started to add the links with the words, “e-discovery” and “legal” which were identical descriptions to the Complainant’s services. The Complainant contends that it is clear the Respondent is trying to take advantage of the service mark PERCIPIENT to draw traffic to its website and to thereby commercially profit by misleading consumers who are searching for information on the Complainant’s business.
The Respondent contends that the Disputed Domain Name is just a normal word that anyone can find in the dictionary and that the Respondent registered the Disputed Domain Name before the Complainant started its business and before it registered its service mark.
Paragraph 4(a) of the Policy sets forth three requirements which must be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.
The Registration Agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and a Response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English should be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) the Complaint has been submitted in English, and it would cause undue delay and expense if the Complainant were required to translate the Complaint into Korean;
2) the Disputed Domain Name resolves to a website that includes links in English; and
3) the Respondent sent an email in English which shows that the Respondent can understand English.
In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center’s preliminary acceptance of the Complaint as filed in English; and (2) issue a decision in English.
This element consists of two parts: first, does the Complainant have rights in a relevant mark and, second, is the Disputed Domain Name identical or confusingly similar to that mark.
The Panel finds that the Complainant has established that it has registered rights to the mark PERCIPIENT.
The Disputed Domain Name is identical to the Complainant’s service mark PERCIPIENT.
The addition of a generic Top-Level Domain such as “.com” after a domain name is technically required. Thus, it is well established that such element may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is identical to the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to at least make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating his rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Respondent registered the Disputed Domain Name on June 30, 2011. However, the Complainant contends that the Respondent has not shown any evidence of his specific use or intended use of the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name contains several sponsored links (pay-per-click) including those with the words “discovery” and “legal” which are identical descriptions to the Complainant’s services and that direct Internet users to the websites of the Complainant’s competitors or other companies that are in the same business as the Complainant. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PERCIPIENT mark. The Respondent has no apparent connection to the Disputed Domain Name that would suggest that he is commonly known by the Disputed Domain Name or that he has acquired any rights in the Disputed Domain Name. This clearly is neither a bona fide offering of goods or services, nor a noncommercial or fair use under paragraph 4(c) of the Policy.
Based on the facts of record, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the Disputed Domain Name, and the Respondent has failed to demonstrate his rights or legitimate interests in the Disputed Domain Name.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv), by using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.
The Respondent argues that he had obtained registration of the Disputed Domain Name before the Complainant created its business and before the Complainant registered its mark for PERCIPIENT, all of which was raised to argue that the Respondent could not have engaged in bad faith registration.
As a preliminary matter, this Panel notes for the record that the Complainant has raised a number of facts which show that the Respondent used the Disputed Domain Name in bad faith, including, among other things, the following:
1. Prior to the registration of the Complainant’s trademark, the Disputed Domain Name contained sponsored links which provided click-though revenue. At that time, the Disputed Domain Name notably did not contain sponsored links that were related to the Complainant’s services. Nevertheless, the activity of utilizing the Disputed Domain Name for sponsored links that do not correspond to the common or dictionary meaning of a term may demonstrate a lack of legitimate, good faith use.
2. Subsequent to the commencement of the Complainant’s business, the Disputed Domain Name began to add links with the words “e-discovery” and “legal” which were identical descriptions to the Complainant’s services and, perhaps most telling of the Respondent’s intent, the Disputed Domain Name began providing links to the Complainant’s competitors.
3. The Complainant has shown that the Respondent clearly desired to sell the Disputed Domain Name by advertising the sale of same for USD 150,000.
4. The Complainant has shown that the Respondent is a “prolific” cybersquatter, having registered numerous domain names containing trademarks owned by other third-parties.
Despite the foregoing findings of fact that clearly favor the Complainant, the key issue in this case is whether the Respondent registered the Disputed Domain Name in bad faith. Paragraph 3.1 of WIPO Overview 2.0 provides that when a domain name is registered by the respondent prior to the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would generally not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. See Edatanetworks Inc. v. Joe Racek, Network of Giving, WIPO Case No. D2015-1608.
In this case, the Respondent’s registration of the Disputed Domain Name occurred before the Complainant created its business and before the Complainant registered its mark for PERCIPIENT. Ultimately, the Complainant’s argument based on paragraph 4(b)(iv) of the Policy fails. See, e.g., Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171:
“Paragraph 4(b)(iv) states that using a domain name in the way specified in that paragraph is “evidence” of both bad faith registration and bad faith use of the domain name. In some circumstances, that evidence can be rebutted, for example, if it can be clearly demonstrated by the Respondent that the registration was not made in bad faith. See Xbridge Limited v. Marchex Sales, Inc., WIPO Case No. D2010-2069 and the cases cited therein. These decisions show that paragraphs 4(a)(iii) and 4(b)(iv) cannot be read in isolation – bad faith must be considered in light of paragraph 4(a)(ii) and, as demonstrated by Telstra, with consideration of the purposes of the Policy and the dynamic nature of the Domain Name System and of cybersquatting behavior.
In short, paragraph 4(b)(iv) provides an evidentiary presumption of bad faith registration where there is evidence of a certain kind of bad faith use. In many cases, it may be difficult for the Respondent to rebut this evidentiary presumption.
Such cases are generally typified by a clear absence of rights or legitimate interests. By way of examples, other relevant factors could include the nature of the domain name itself, the content of any website to which the domain name pointed – including any changes in such website content and the timing thereof, the registrant's prior conduct generally and in UDRP cases in particular, the reputation of the complainant's mark, the use of (fraudulent) contact details or a privacy shield to hide the registrant's identity, the failure to submit a response, the plausibility of any response, or other indicia that generally cast doubt on the registrant's bona fides.
In certain circumstances, paragraph 4(b)(iv) may assist a complainant where it is unclear why a domain name was registered [ ] and then opportunistically used to attract Internet users by creating a likelihood of confusion with the complainant's trademark. But that is not the situation here.
In the words of the panel in Telstra ‘the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.”
Taking account of the facts of this case, this Panel finds that the present evidence fails to establish the necessary elements of bad faith under the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
Sole Panelist
Date: May 6, 2016