The Complainant is The Hype Company, S.L., Spain, represented by Herrero & Asociados, Spain.
The Respondent is Ehren Schaiberger, United States of America (“United States”), self-represented.
The disputed domain name <thehypecompany.com> is registered with Top Tier Domains LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 June 16, 2021. In accordance with the Rules, paragraph 5, the due date for submission of the Response was July 6, 2021. At the request of the Respondent, the due date for submission of the Response was extended until July 10, 2021, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center July 10, 2021.
The Center appointed Jane Seager, María Baylos Morales, and The Hon Neil Brown Q.C. as panelists in this matter on August 20, 2021. 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.
Incorporated on April 16, 2018, the Complainant is a Spanish biotechnology company, forming part of the Agroindustrial Kimitec group of companies. The Complainant is engaged in the production and sale of products for plant growth and care, such as fertilizers, growth stimulants, and probiotics.
For use in connection with its agricultural products, the Complainant is the owner of the following trademarks:
- Australian Trademark Registration No. 1962911, HYPE THE HYPE COMPANY (semi-figurative), registered on February 26, 2018;
- International Trademark Registration No. 1429644, HYPE THE HYPE COMPANY (semi-figurative)1 , registered on February 26, 2018;
- European Union Trade Mark No. 017596933, HYPE THE HYPE COMPANY (semi-figurative), applied for on December 15, 2017, and registered on June 27, 2018;
- United Kingdom Trademark Registration No. UK00917596933, HYPE THE HYPE COMPANY (semi-figurative), applied for on December 15, 2017, and registered on June 27, 2018;2
- Brazilian Trademark Registration No. 914334751, HYPE THE HYPE COMPANY (semi-figurative), applied for on March 15, 2018, and registered on April 9, 2019;
- Israeli Trademark Registration No. 310087, HYPE THE HYPE COMPANY (semi-figurative), applied for on February 26, 2018, and registered on September 3, 2019; and
- Canadian Trademark Registration No. TMA1095756, HYPE THE HYPE COMPANY (semi-figurative), applied for on March 6, 2018, and registered on March 15, 2021.
The Complainant is the registrant of the domain name <thehypecompany.es>, registered on June 26, 2017. The Complainant operates a public-facing website via the domain name <wearethehype.com>.
The disputed domain name was registered by the Respondent on April 13, 2018. The Respondent operates a business of buying and selling domain names under the name “MegaDomains”. At the time of submission of the Complaint, the disputed domain name redirected to a domain name sales page at “www.dan.com”, listing the disputed domain name for sale with a buy-it-now price of USD 3,499, identifying the seller of the disputed domain name as “MegaDomains”.
On May 12, 2021, the Complainant sent a cease and desist letter to the Respondent, putting the Respondent on notice of its trademark rights, and requesting, inter alia, transfer of the disputed domain name. The Complainant sent reminder notices to the Respondent on May 25, 2021, and on June 1, 2021. The Respondent did not reply to the Complainant’s communications.
The Complainant asserts rights in the trademark HYPE THE HYPE COMPANY. The Complainant submits that the element “THE HYPE COMPANY” is that which “stands out” from the Complainant’s trademarks. The Complainant asserts that the disputed domain name consists of the Complainant’s trademark, under the generic Top-Level Domain (“gTLD”) “.com”, creating a likelihood of confusion and risk of association between the Complainant’s registered trademarks and the disputed domain name. The Complainant highlights its ownership of the domain name <thehypecompany.es>, which redirects to the Complainant’s website at “www.wearethehype.com”, and submits that the disputed domain name is identical to the Complainant’s domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, asserting that it has not authorized the Respondent to register or use the disputed domain name. The Complainant contends that the Respondent has no registered trademarks for “the hype company” or any brand comprising the term “hype”. The Complainant claims to enjoy exclusive rights over “the hype company”, and further argues that the Respondent is not carrying out any legitimate activity under the name “the hype company”. The Complainant asserts that the Respondent is engaged in trademark infringement, and is attempting to sell the disputed domain name for economic gain.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant claims that “THE HYPE COMPANY” is a trademark that is present in many countries, and that the trademark has always been used by its legitimate owner (the Complainant) to carry out its professional activities. The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, in bad faith. The Complainant asserts that its registered “brands and domains” predate the Respondent’s registration of the disputed domain name, that the Respondent’s registration of the disputed domain name was made with knowledge of this fact, and that the Respondent’s registration of the disputed domain name was therefore made in bad faith. The Complainant submits that the Respondent is not using the disputed domain name to offer products and services, that the Respondent registered the disputed domain name with knowledge of the Complainant’s brands in order to obtain economic benefit from its sale, and that it did so in order to prevent the Complainant from registering the disputed domain name itself. The Complainant points to the Respondent’s failure to reply to the Complainant’s cease and desist letter and subsequent reminders as further evidence of the Respondent’s bad faith.
The Complainant requests transfer of the disputed domain name.
The Respondent asserts that the Complainant has made misleading claims insofar as its trademark rights are concerned, in that the Complainant misrepresented the registration dates of the trademarks, and failed to mention that the trademarks were more recently assigned to the Complainant company. The Respondent notes that all of the Complainant’s trademarks are figurative trademarks, and argues that such marks are only enforceable as a whole, usually within the scope of the graphic design. The Respondent submits that the word “HYPE” is the dominant element of the Complainant’s trademarks and that the text “THE HYPE COMPANY” is merely a footnote within the design. The Respondent asserts that the Complainant’s trademarks are extremely narrow in scope, limited to agricultural use. The Respondent submits that the Complainant conflates its rights in HYPE THE HYPE COMPANY to extend to cover “THE HYPE COMPANY”, while the Complainant does not have registered trademark rights for “THE HYPE COMPANY” alone. The Respondent contends that the disputed domain name is not confusingly similar to the Complainant’s trademark.
The Respondent asserts that he is in the business of buying, holding, and selling descriptive keyword, phrasal, and brandable “.com” domain names. The Respondent submits that the business of offering domain name branding and development services is a legitimate activity, and that he is using the disputed domain name in connection with a bona fide offering of goods or services, because he is in the business of creating and supplying domain names to new businesses.
The Respondent submits that the disputed domain name was registered in good faith. The Respondent asserts that he had never heard of the Complainant at any time prior to the registration of the disputed domain name. The Respondent states that the disputed domain name expired and dropped on April 13, 2018, at which point it was identified by the Respondent as a good descriptive keyword and brandable domain name. The Respondent argues that the disputed domain name was attractive as it followed the popular branding convention of “the [blank] company”, and notes in this regard that he has registered a number of other domain names following such a naming pattern, as well as other domain names including the word “hype”. The Respondent asserts that he registered the disputed domain name before the Complainant or its limited rights in the HYPE THE HYPE COMPANY trademarks existed. In this regard, the Respondent asserts that he registered the disputed domain name before the Complainant was assigned rights in any of the HYPE THE HYPE COMPANY trademarks, and that the registration of the disputed domain name predates the formation of the Complainant company – a fact that the Complainant omitted from the Complaint. The Respondent further notes that the Complainant company has only four employees, the earliest of which was engaged in 2019, while the Complainant’s social media pages were created from June 2018 onwards, and that the earliest publication of the Complainant’s website appears to have been in August 2019. The Respondent submits that there is no evidentiary basis for concluding or even inferring knowledge of the Complainant on the part of the Respondent at the time that the disputed domain name was registered.
The Respondent requests that the Panel deny the remedies requested by the Complainant.
In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel finds that the Complainant has established rights in the semi-figurative trademark HYPE THE HYPE COMPANY, the registration details of which are provided in the factual background section above.
Assessment of identity or confusing similarity involves comparing the alpha-numeric domain name and the textual components of the relevant mark. To the extent that design or figurative/stylized elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10. In addition, the goods and/or services for which the relevant mark is registered or used in commerce, the filing/priority date, date of registration, and date of first claimed use, are not considered relevant to the first element test; see WIPO Overview 3.0, section 1.1.2.
The disputed domain name comprises almost all of the textual elements of the Complainant’s HYPE THE HYPE COMPANY trademark, omitting the first occurrence of the term “HYPE”, and the spaces between the words making up the Complainant’s trademark (a space being incapable of representation per se in a domain name). The Panel finds that the omission of the initial term “HYPE” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, as sufficient elements of the Complainant’s trademark are present such that the Complainant’s trademark may be said to be recognizable in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant’s case under the second element is grounded in the notion that it has exclusive rights to the “The Hype Company” name, as reflected in its trademark, and that the Respondent’s registration and offering of the disputed domain name for sale is necessarily illegitimate. The Panel finds such an approach to be misguided. While the Complainant’s trademark registrations may grant the Complainant exclusive rights in HYPE THE HYPE COMPANY insofar as relevant goods or services are concerned in jurisdictions where the Complainant enjoys such trademark protection, the Complainant’s trademarks do not confer exclusive rights for any and all use of the phrase “the hype company” by third parties.
The Respondent makes several submissions regarding the legitimacy of a business of registering brandable domain names for resale to interested parties in the future. While prior UDRP panels have accepted that aggregating and holding domain names for resale consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the Policy, the Panel also notes that the mere registration of a domain name comprised of a dictionary word or phrase does not by itself confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.10.1. Nevertheless, the Panel finds that the Respondent’s listing of the disputed domain name for sale falls short of the type of abusive use as alleged by the Complainant.
Noting that the Complaint ultimately fails on the third element, the Panel does not consider it necessary to enter a definitive finding under paragraph 4(a)(ii) of the Policy.
As noted above, the Complainant claims that the Respondent was necessarily aware of the Complainant’s trademarks when registering the disputed domain name, registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and did so with a view to selling the disputed domain name to the Complainant for an amount exceeding the Respondent’s out-of-pocket costs associated with the disputed domain name, in bad faith.
The disputed domain name was registered by the Respondent on April 13, 2018, three days prior to the incorporation of the Complainant company. While the Complainant’s founder had by this stage registered a number of semi-figurative trademarks for HYPE THE HYPE COMPANY, the Complainant has failed to produce any relevant evidence to demonstrate that the Respondent has sought to target the Complainant through the registration or use of the disputed domain name. The Complainant simply asserts that the Respondent must have known of the Complainant’s rights when registering the disputed domain name, and did so in order to prevent the Complainant from registering the disputed domain name, and did so with a view to profiting from its resale to the Complainant.
Conversely, the Respondent claims to have had no knowledge of the Complainant when he registered the disputed domain name, and has produced evidence indicating that he has registered a number of other domain names following the naming pattern “the [term] company”, including (but not limited to) <thebadcompany.com>, <thebarecompany.com>, <thebehaviorcompany.com>, <thebespokecompany.com>, <thecoachcompany.com>, <thedietcompany.com>, <thefarmcompany.com>, <thestockcompany.com>, as well as a number of “hype”-formative domain names, such as <beyondthehype.com>, <hypegroup.com>, <hypeliving.com>, <worldofhype.com>, and others.
In the circumstances, the Panel finds the Respondent’s explanation for his registration of the disputed domain name to be credible, and finds it more likely than not that the Respondent did so without knowledge of the HYPE THE HYPE COMPANY trademark. In this regard, the Panel notes that the Complainant’s trademark is composed of dictionary terms, and that the distinctiveness of the Complainant’s trademark results, in part, from the semi-figurative nature of the mark; there is no evidence of the Respondent having engaged in a pattern of abusive domain name registration targeting the Complainant or the rights of any third party; while the Respondent has listed the disputed domain name for sale, the Respondent has not at any time sought to sell the disputed domain name to the Complainant as the owner of a corresponding trademark; nor is there any evidence of the Respondent attempting to force the Complainant into any form of unwanted business relationship.
In the circumstances, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered in bad faith pursuant to paragraph 4(a)(iii) of the Policy, accordingly the Complaint fails.
For the foregoing reasons, the Complaint is denied.
Jane Seager
Presiding Panelist
María Baylos Morales
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: September 13, 2021
1 The letters “H”, “Y”, “P” and “E” appear in a rectangular arrangement, where the letters “H” and “E” are on the top and the letters “P” and “E” are on the bottom; these letters, when arranged like this, occupy more than 80 percent of the space of the mark; under the square, in smaller letters, “THEHYPECOMPANY” appears without spaces between the letters and enclosed between two horizontal bars.
2 The Panel notes that the United Kingdom Trademark relied on by the Complainant was registered by “Fidel Gonzalez Sampedro”, the owner and a director of the Complainant company. The other trademarks listed above, applied for prior to the date of incorporation of the Complainant company were applied for by Fidel Gonzalez Sampedro, and have been assigned to the Complainant company.