WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Diamond Holding Sàrl v. Guava Softs Pvt Ltd

Case No. D2013-0537

1. The Parties

The Complainant is Red Diamond Holding Sàrl of Luxembourg, represented by Office Ernest T. Freylinger S.A., Luxembourg.

The Respondent is Guava Softs Pvt Ltd of Ludhiana, India, represented by Ankur Raheja, India.

2. The Domain Name and Registrar

The disputed domain name <leecooper.biz> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2013. The Response was filed with the Center on April 14, 2013. On April 19, 2013, the Complainant submitted a Supplemental Filing.

The Center appointed John Swinson as the sole panelist in this matter on April 23, 2013. 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.

4. Factual Background

The Complainant is Red Diamond Holdings Sàrl. It has recently been assigned the rights in various trade marks by its successor, Doserno Trading Limited. The Complainant provided the Panel with copies of the relevant assignment agreements. When the Complaint was filed, these assignments had not been registered in all relevant jurisdictions.

The Complainant is the owner of numerous trade mark registrations for LEE COOPER (the “Trade Mark”), including in India. The Complainant also owns numerous domain names which include the Trade Mark. The Trade Mark is used for clothing and fashion in general.

The Respondent is Guava Softs Pvt Ltd. The Respondent registered the Disputed Domain Name on January 21, 2013. The Respondent’s website at the Disputed Domain Name advertises the availability of the Disputed Domain Name for a personalized email address. The website also displays links to other “.biz” domain names.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

(i) Identical or Confusingly Similar

The Disputed Domain Name is identical to the Trade Mark.

(ii) Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not commonly known by the Disputed Domain Name;

- the Complainant has not allowed or licensed the Respondent to use the Trade Mark;

- the Respondent stocks “.biz” domain names (e.g. <gates.biz> and <hilfiger.biz>, which is not a bona fide offering of goods or services;

- the fact that a domain name is a surname or contains a dictionary word does not create a legitimate interest; and

- the website at the Disputed Domain Name contains links to the websites of the Complainant’s competitors, unfairly capitalizing on the Trade Mark does not create legitimate rights or interests.

(iii) Registered and Used in Bad Faith

The Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:

- the Respondent must have been aware of the Trade Mark at the time of registration;

- the Respondent specializes in the registration and sale/hire of domain names, capitalizing on the well-known character of trade marks or names, this is a pattern of abusive behavior; and

- the Disputed Domain Name directs to a website which is a parking page containing sponsored links to websites of the Complainant’s competitors.

B. Respondent

The Respondent’s contentions are as follows.

(i) Identical or Confusingly Similar

The Respondent did not make any relevant submissions on this point.

(ii) Rights or Legitimate Interests

The Respondent has been developing a project named “email.biz” which allows customers to make use of various domain names with “.biz”. When this project is officially launched in May 2013, over 15,000 “.biz” email extensions will become available for registration. The purpose of the website at the Disputed Domain Name is to run an email service for people with the last name “Lee Cooper” (the surname of a famous country singer, Wilma Lee Cooper). The Respondent is the intermediary, providing email services to persons with this surname.

There has only been one other complaint in the past year in relation to the Respondent’s domain names. The Respondent denies that it has violated any rights through the registration of <gates.biz> and <hilfiger.biz> and in any event, these domain names are not the subject of this Complaint.

The Respondent’s legitimate interest is offering “.biz” extensions as email addresses; however, domain names are never sold or rented as such. The Disputed Domain Name is not available for sale/hire, except as an email extension.

The Respondent had no intention of running competitive advertisements on the website at the Disputed Domain Name. The advertisements appearing on the website were beyond the control of the Respondent and only appeared while the website was being tested in March 2013.

(iii) Registered and Used in Bad Faith

The Respondent has not registered or used the Disputed Domain Name in bad faith. The Complainant is aware of the business model of the Respondent and has made unnecessary allegations.

The Disputed Domain Name does not seek to infringe any trade mark, or claim any endorsement/affiliation with any other party. The Disputed Domain Name has never been offered for sale/hire, or for any kind of paid advertisement. The Terms of Service, which are available on the website, reflect this.

The Respondent acknowledges that tests for different features, including advertisements, were conducted on the website in March 2013.

The Respondent submits ED Enterprise AG v. Guava Softs Pvt Ltd, Anshul Goyal, WIPO Case No. D2012-0147 (where the same Respondent was ordered to transfer the relevant domain name) is distinguishable on its facts.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Procedural Issues

The Policy contemplates prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.

The Complainant has provided supplementary submissions which offer rebuttal arguments and clarify several issues. They do not address the key elements of the Policy that need to be satisfied, or offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

Although trade mark assignments have not been finalized in all relevant jurisdictions, the Panel has reviewed the assignment agreement and confirms that the Complainant owns the Trade Mark.

The Disputed Domain Name is identical to the Trade Mark. The “.biz” at the end of the Disputed Domain Name is typically irrelevant in assessing confusing similarity under the Policy and may thus be ignored.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and

- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark.

The Respondent seeks to overcome the Complainant’s prima facie case by showing that it is using the Disputed Domain Name in connection with a bona fide business called “email.biz” which allows customers to make use of various domain names with “.biz” for email extensions.

The Panel accepts that in some circumstances the provision of this type of personalized email service in connection with a domain name may provide a respondent with a legitimate interest in that domain name if this was its sole usage (see Marden Group B.V. v. Tucows.com.co, WIPO Case No. D2011-1061 and cases cited therein). Here, however, the website at the Disputed Domain Name has also been used to display advertising links to the websites of the Complainant’s competitors.

The Respondent claims that this content was beyond the control of the Respondent and only appeared while the website at the Disputed Domain Name was being tested. This situation is dealt with at paragraph 3.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):

“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).”

“Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”

The Panel finds that the circumstances of this case do not justify an exception. As stated in ED Enterprise AG v. Guava Softs Pvt Ltd, Anshul Goyal, WIPO Case No. D2012-0147 (in relation to the same Respondent):

“[…] Respondent offers many online products and services, and its YouTube video indicates that it has registered or intends to register many “.biz” domain names in connection with its “Email.biz” business. Anyone professionally conversant with online services and domain name-related business may be presumed to be aware of the fact that registrars will commonly prepare parking pages for undeveloped domain names registered with them, unless the registrant takes the proper steps to opt out of such arrangement, (whether or not at additional expense), to prevent this. In this case the “default parking page,” to use Respondent’s term, is attributable to Respondent.”

Accordingly, the Panel finds that the Respondent’s use of the website at the Disputed Domain Name to display advertising links to the Complainant’s competitors was not bona fide use for the purposes of paragraph 4(a)(ii) of the Policy.

Additionally, regardless of whether the Respondent’s proposed email registration business is legitimate, the Respondent has not provided any evidence to demonstrate that it has rights or legitimate interests in relation to the Disputed Domain Name itself (due to its intended future business use).

In light of the above, the Respondent has not rebutted the Complainant’s prima facie case. The Complainant therefore succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

As discussed in relation to the second element, the use of the website at the Disputed Domain Name as a parking page is evidence of bad faith use (see WIPO Overview 2.0, paragraph 3.8).

There has been much debate regarding whether bad faith must be shown both at the time of registration and subsequently. The Panel endorses the approach in Poundland Limited v. Dealz.com, WIPO Case No. D2012-0918, that is, that registration and use are separate concepts.

The Panel finds that the following evidence for bad faith registration:

- The Respondent has provided no evidence (e.g. census figures) that “Lee Cooper” is a surname; apart from stating that an American singer had the surname “Lee Cooper” (her full name was “Wilma Lee Cooper” and on the basis of the Respondent’s submissions, it was unclear to the Panel whether “Lee” was a middle name or part of a surname). The Panel has conducted its own investigations (as it is entitled to) of phone directories and search engines. It has not found any records of “Lee Cooper” as a surname. It has also reviewed the Wikipedia entry of “Wilma Lee Cooper”, and notes that “Cooper” was the singer’s last name, not “Lee Cooper”.

- The Trade Mark is well-known worldwide, as such, the Panel believes that the Respondent must have been aware of the Complainant and the Trade Mark when it registered the Disputed Domain Name, or at a minimum should have been so aware. Brief enquiries (e.g. a simple Google search) would have led the Respondent directly to the Complainant. On the evidence provided, the Panel concludes that the Respondent either made those enquiries (and proceeded with actual knowledge of the Complainant and the Trade Mark), or was “willfully blind” in failing to make them (in the sense discussed in cases such as Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, mVisible Technologies Inc. v. Navigation Catalyst Systems Inc., WIPO Case No. D2007-1141, and Grundfos A/S v. Texas International Properties, WIPO Case No. D2007-1448.

- The Respondent’s subsequent use of the Disputed Domain Name (specifically, the links on the website to third party websites of the Complainant’s competitors) leaves little room for doubt to the Panel that the Disputed Domain Name was registered, at least in part, in order to profit from the trade mark value in the name.

The Panel finds, taking account of all of the circumstances of the case, the Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <leecooper.biz> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: May 7, 2013