WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Airtango AG v. Privacydotlink Customer 2290723 / Gustavo Winchester

Case No. D2017-2095

1. The Parties

The Complainant is Airtango AG of Crailsheim, Germany, represented by Dr. Meyer-Dulheuer & Partners LLP, Germany.

The Respondent is Privacydotlink Customer 2290723 of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland/ Gustavo Winchester of Belo Horizonte, Brazil.

2. The Domain Name and Registrar

The disputed domain name, <airtango.com> (the "Domain Name"), is registered with Uniregistrar Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 27, 2017, 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 the Complainant on October 31, 2017 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 amended Complaint on November 2, 2017.

The Center verified that the Complaint together with 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 November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2017.

The Center appointed Tony Willoughby as the sole panelist in this matter on December 6, 2017. 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 invitation to the Complainant to amend the Complaint stemmed from the fact that the second above named Respondent registered the Domain Name in the name of a privacy service, the first above named Respondent. For the purposes of this decision the Panel treats them as one. Henceforth, the term "Respondent" is used to refer to them both.

4. Factual Background

The Complainant is a German-based company, which was formed in Germany in April/May 2016. Its objects are based around "the development, manufacture, distribution and operation of server equipment and all related components, in particular hardware and software, for the public use of Internet services via radio networks".

The Complainant is the registered proprietor of two German trade mark registrations of marks comprising or including the trade mark AIRTANGO. In the case of each of them the application was filed on December 5, 2016 and in each case the registration came through on March 24, 2017. For present purposes it is only necessary to detail one of them, namely Registration No. 302026110954 AIRTANGO (word) for a wide variety of goods and services in classes 9, 35, 36, 38 and 42.

The Domain Name was registered on August 16, 2002.

On July 17, 2017 a lawyer representing the Complainant sent an email to the privacy service introducing the Complainant in the following terms:

"airtango is aiming to play a major role in the fastest growing digital market, world-wide LIVE / real time video content and in this light offers a platform that manages, organizes and delivers video content through the Internet or via exclusive airtango Live-Points. For further details, please refer to www.airtango.de. Since airtango wishes to even stronger promote and support its global expansion, airtango is in need of the international Internet presence airtango.com."

The email goes on to invite the Respondent to agree to enter into negotiations for the transfer of the Domain Name failing which the lawyer will "feel compelled to initiate formal proceedings in accordance with the applicable laws."

On September 8, 2017 another lawyer representing the Complainant sent an email to the privacy service drawing the latter's attention to the Complainant's trade mark registrations (referred to above) and stating "You are not authorized to use our clients name and trade marks. We hereby call on you to submit us your authorization (EPP) code for domain transfer and ensure the domain is unlocked until September 22, 2017 latest. Otherwise we will initiate an UDRP case at WIPO."

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, that:

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

(ii) The 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.

In coming to a decision the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding."

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".

B. Identical or Confusingly Similar

The Panel finds that the Domain Name, which incorporates the Complainant's trade mark in its entirety, is identical or confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Panel finds it unnecessary to address this issue in light of the finding under section D below.

D. Registered and Used in Bad Faith

To succeed in a complaint under the Policy it is well-established that under this, the third factor (paragraph 4(a)(iii)of the Policy), the first thing that a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind. See, for example, Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335:

"The Domain Name was registered on March 4, 2000, some 10 years before the Complainant came into existence, and 13 years before the Complainant acquired rights in respect of the mark TRTL and subsequently commenced trading under that name. In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the name TRTL at the time of registration. In this Panel's view, therefore, the Domain Name cannot conceivably have been registered in bad faith."

No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877).

In the Complaint, the Complainant, recognizing that the date of registration of the Domain Name preceded the Complainant's formation and the Complainant's trade mark rights, states: "It is of no importance that the trade marks have been registered after the registration of the Domain Name."

In support of that proposition the Complainant cites three prior decisions under the Policy. Two of the decisions are the decisions of the same highly experienced German panelist sitting as a single panelist. The third is a German language decision of a three person panel in which the same highly experienced German panelist was the presiding panelist. The Panel, not being a German speaker, is unable to address the last of these three cases, but doubts that it differed in principle to any significant degree from the other two.

In Official Site Hotel Ltd. v. 1001 Web Promotions, WIPO Case No. D2006-0322, the panel, addressing the first factor (paragraph 4(a)(i) of the Policy) and only the first factor, stated:

"The fact that these trademarks were registered after the registration of the disputed domain name is of no importance. The issue under paragraph 4(a)(i) of the Policy is whether the Complainant has rights as of the time of the Complaint. Respondent's lack of knowledge of Complainant's trademark rights at the time of the registration of the domain names, however, is relevant to the second and third factors (legitimate interest and bad faith)." [Emphasis added]

Thus, as can readily be seen, the sentence in the Complaint reading: "It is of no importance that the trade marks have been registered after the registration of the Domain Name" was "lifted" straight from a passage in the above case dealing solely with the first factor and expressly stating that for the other two factors (paragraphs 4(a)(ii) and (iii) of the Policy) the timing of the trade mark rights is relevant. All that the panel is saying here is that for the purposes of the first factor (but not the other two factors), the date of the complainant's trade mark rights is irrelevant provided that those rights exist at the date of filing of the complaint.

In Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, the panel, addressing solely the first factor (paragraph 4(a)(i) of the Policy), stated:

"That the date of registration of the mark is after registration of the Domain Name is of no moment. The issue under this first factor is whether the Complainant has rights as of the time of the Complaint. Whether the registration date is relevant for the finding of bad faith will be discussed at the appropriate stage (see below)." [Emphasis added]

And then, when addressing the issue of bad faith under the third factor (paragraph 4(a)(iii) of the Policy), the panel had this to say:

"The fact that the Complainant's trademark was registered half a year after the Respondent registered the domain name at issue does not hinder the finding of bad faith. According to Para 4 (a) the trademark needs not to be registered to fall under Para. 4 of the Rules. It should be emphasized that the Policy has adopted a very broad concept of 'trademark or service mark.' It simply mentions 'a trademark or service mark in which the Complainant has rights' and thus also considers trademarks that enjoy protection on the basis from actual use or the acquisition of secondary meaning.

The Panel concludes that in fact the Complainant has used the sign 'Delikomat' in the course of trade in such a way that the sign has acquired secondary meaning as a trademark and that, for the purposes of the dispute, in all likelihood enjoys trademark protection according to paragraph 9 III Austrian Unfair Competition Law, before the registration of the domain name."

Thus, the fact that the domain name in issue in that case was registered after the complainant's trade mark registration was of no moment, simply because the complainant had satisfied the panel that it had generated unregistered trade mark rights in respect of the mark prior to registration of the domain name. A very different situation from this case where on the evidence before the Panel, the Complainant had no pre-existing trade mark rights (registered or unregistered) prior to its formation in 2016.

This issue is dealt with in section 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

Section 3.8 poses the question: "Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?" While section 3.8.2 deals with exceptional circumstances not present here, the standard answer set out in section 3.8.1 reads as follows: "[…] where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel's assessment of a complainant's standing under the first UDRP element.)"

The reasoning is very straightforward. The Policy was introduced to deal with domain name registrants targeting trade mark owners; in other words selecting their domain names with the trade mark owner's trade mark specifically in mind at the date of registration of the domain name in issue. How can a registrant of a domain name, registering the domain name in issue years in advance of the complainant's trade mark rights, be said to be registering the domain name abusively intending in some way to take unfair advantage of the complainant's non-existent trade mark rights?

Back in 2002 when the Respondent registered the Domain Name he cannot have had the Complainant's trade mark rights in mind, trade mark rights which only came into existence in 2016/7.

The Complainant also attacks the Respondent's use of the Domain Name, which on the evidence of the Complainant has been to connect the Domain Name to a parking website featuring advertising links to websites offering cheap air fares. Even if the Respondent's subsequent use of the Domain Name had been relevant (which it is not, given that the registration of the Domain Name cannot have been in bad faith), the use of which the Complainant complains appears to the Panel to be unexceptionable in the absence of any bad faith targeting of the Complainant. The Domain Name signifies to the Panel something to do with the "air" and the Respondent's webpage, examples of which the Complainant has produced dating back to 2007, consistently feature a parking page with advertising links relating to air travel and a banner at the head reading:

"More Information. At this web site we offer information concerning airtango. In addition to advice on airtango, you can view the most definitive sites concerning air travel, travel and discount travel. Airtango.com has the best websites concerning airtango on the Internet"

The Complainant has made no attempt to explain how that use can be unfairly trading on the Complainant's reputation, which is in an entirely different field (see section 4 above).

The Complainant has produced evidence to demonstrate that the Respondent is a domainer (i.e.,someone whose business is to exploit domain names for their commercial value). Insofar as the Policy is concerned that area of business is unexceptionable provided that the domainer, when registering or acquiring the domain name in issue is not targeting a trade mark owner. Acquiring domain names simply in order to trade them at a profit or to exploit them for pay-per-click revenue is not, of itself, objectionable in the absence of any targeting of the complainant.

The Complainant has also produced evidence to demonstrate that on several occasions the Respondent has been involved in proceedings under the Policy in which he has been ordered to transfer the domain name in issue to the complaining trade mark owners. This type of evidence can be of value where it demonstrates a pattern of abusively registering domain names in order to target trade mark owners. Here, of course, in 2002 the Respondent cannot have been targeting the Complainant or its trade mark, neither of which came into existence until 2016/7. The acquisition of the Domain Name cannot therefore have formed part of any pattern, which may be evidenced in the cases cited by the Complainant.

The Complainant has failed to satisfy the Panel that the Domain Name has been registered and is being used in bad faith.

E. Reverse Domain Name Hijacking ("RDNH")

As can be seen from section 4.16 of WIPO Overview 3.0:

"Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. At the same time, the mere fact of a respondent default would not by itself preclude an RDNH finding as this ultimately turns on the complainant's conduct. In either event, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.

Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant's lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview 3.0 – except in limited circumstances which prima facie justify advancing an alternative legal argument […]."

The Complainant and its advisers should have appreciated from the very outset, and particularly in light of the cases cited in the Complaint and quoted above, that the Complaint was doomed to fail for failure to demonstrate on the balance of probabilities that the Domain Name was registered with the Complainant in mind. Contrary to the Complainant's statement that "It is of no importance that the trade marks have been registered after the registration of the Domain Name", the fact that the Domain Name was registered fourteen years before the Complainant and its trade mark rights saw the light of day had to be of crucial importance (and should have been seen to be of crucial importance) to the outcome of this case.

The Panel finds that this Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied and the finds that this Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.

Tony Willoughby
Sole Panelist
Date: December 11, 2017