WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Signify Holding B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Matthew Pilsbury, MCP Capital, LLC

Case No. D2020-0278

1. The Parties

The Complainant is Signify Holding B.V., Netherlands, represented by P.D. Verweij, Netherlands.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., United States of America (“United States”) / Matthew Pilsbury, MCP Capital, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <harmonizehue.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2020, 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 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on February 7, 2020. The Complainant filed an amendment to the Complaint on February 10, 2020.

The Center verified that the Complaint together with the amendment to 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 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. The Respondent sent an email communication on February 11, 2020 requesting a four day extension to submit a Response. On February 12, 2020, the Center granted the Respondent the automatic four calendar day extension for filing a response. On February 23, 2020, the Respondent submitted the Response.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 11, 2020. 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 a limited liability company organized and existing under the laws of the Netherlands, specializing in lighting for professionals, consumers and the Internet of Things. The Complainant is a global company with sales of EUR 6.2 billion in 2019, approximately 29,000 employees, and a presence in over 70 countries. The Complainant and its predecessors have been involved in lighting for more than 125 years. The Complainant split from Koninklijke Philips N.V. in 2016 and between then and 2019 was named Philips Lighting Holding B.V. The Complainant continues to use the Philips brand for its lighting systems under license from Koninklijke Philips N.V., including a proposition for multi-colored lighting and control systems which uses the name and trademark HUE. The Complainant also offers a system named “Philips Hue Play HDMI Sync Box” which allows the user to synchronize smart lights to video content.

The Complainant has several registrations for the HUE trademark around the world, including for example, Benelux registered trademark for the word mark HUE, registered under no. 0994289 on July 1, 2016, in international classes 9 (control apparatus, computer software programs and electronic lighting components for LED lighting) and 11 (lighting installations controlled by various apparatus); and International registered trademark for a figurative mark consisting of the word “hue” in lowercase stylized multi-colored typeface, registered under no. 1344544 on January 20, 2017, with designation to Australia, China, the European Union, India, Japan, Russian Federation, Turkey, and the United States with no. 1344544, in international classes 9 and 11 (similar goods and services to said Benelux mark).

The disputed domain name was registered on December 1, 2019. The Respondent appears to be a limited liability company with an address in Washington DC, United States. The website to which the disputed domain name is pointed promotes a system branded “Harmonize” which is stated to be still in development (“the Respondent’s website”). Said product is a competitor product for the Complainant’s “Philips Hue Play HDMI Sync Box” and, at least to the Panel’s eyes, fulfils a similar function of using an HDMI input to synchronize room lighting colors with the colors appearing on a video display device.

The Respondent’s website is entitled “Harmonize / Harmonize Philips Hue lights with your TV / Learn More”. Below the title is an entry stating “Harmonize / for Philips Hue / The best way to sync Philips Hue lights with HDMI video sources”, which is followed by an embedded promotional video and a description stating “Harmonize is a low latency video analysis and pass-through device which alters Philips Hue lights based on their location relative to a screen; creating an ambient lighting effect and expanding content past the boundries [sic] of a screen”. Beneath five bullet points listing features of the “Harmonize” system is a statement that it is currently in development with expected release in summer 2020, together with an invitation to sign up to a mailing list for further updates. At the bottom of the page, below a copyright statement, a disclaimer has been inserted in smaller typeface stating “This project has no direct affiliation with Signify or Philips Hue. Hue and Philips Hue are trademarks of Signify”. This disclaimer was added by the Respondent on February 7, 2020, after the filing of the present Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.

The Complainant notes that where a trademark is contained in a domain name in its entirety and is recognizable as such, it is normally considered confusingly similar to the mark, noting that the addition of other terms (whether descriptive, geographic, or otherwise) would not prevent a finding of confusing similarity under the first element. The Complainant asserts that there is a considerable risk that the average Internet user would assume that there is an affiliation between the disputed domain name, the Respondent, and the Complainant.

The Complainant asserts that the Respondent is not making a bona fide offering of goods or services using the disputed domain name, referencing the criteria specified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and asserting that the Respondent’s conduct fails at least the first, second and third elements of these, noting that the Respondent does not offer the Complainant’s products for sale, that the Respondent offers a third party competitive product, and that the website associated with the disputed domain name does not accurately disclose the Respondent’s relationship with the Complainant.

The Complainant submits that the Respondent is not commonly known by the disputed domain name and appears to have no trademark rights in the HUE brand, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, given that the Respondent uses the HUE trademark to bait Internet users and then switch them to other goods, namely the “Harmonize” product.

The Complainant notes that the disputed domain name is likely to be confused with the Complainant’s mark and was registered by the Respondent and has been used for the purpose of offering a product competitive with those offered under such mark, long after such mark was registered by the Complainant. The Complainant contends that this constitutes registration and use in bad faith. The Complainant notes that the Respondent is seeking to gain commercial advantage from the Complainant’s mark by offering a product not originating with the Complainant but in competition with it.

The Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the trademark HUE as to the source, sponsorship, affiliation, or endorsement of his website, this being evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Complainant adds that the Respondent also shows bad faith by not accurately disclosing the Respondent’s relationship with the trademark owner, given that no information is provided about any possible relationship (or lack thereof) between the Respondent and the Complainant.

B. Respondent

The Respondent requests that the Complaint be denied.

The Respondent disputes that the addition of the word “harmonize” to the Complainant’s mark in the disputed domain name renders this confusingly similar to said mark, noting that in the majority of cases such finding has been made where the additional word is geographic or descriptive and adding that “harmonize” is a verb which has no meaning in respect to the Parties’ industry other than to reference the Respondent’s product in development. The Respondent notes that “Hue” is a three-letter word generally meaning “colors”, which is relevant as the Respondent’s product is intended to sync colors with video.

The Respondent argues that the website associated with the disputed domain name is well-known as a site for the development of Respondent’s forthcoming product and that it is extremely improbable that an Internet user would randomly type in the disputed domain name when searching for the Complainant’s HUE products, adding that for the disputed domain name, users expect to see the site which currently exists. The Respondent refers to Hoffmann-La Roche Inc. v. Mikhail Pavlishin, WIPO Case No. D2010-0998 and related cases in which confusing similarity was not found, due to additional words in the domain names under consideration having a distinguishing character from the trademark(s) concerned.

The Respondent argues that the Complainant’s allegations of “bait and switch” are false because no products are currently being offered on the website associated with the disputed domain name. With regard to the Complainant’s submissions relative to the absence of a statement on said website confirming the lack of relationship between the Parties, the Respondent notes that the site previously only mentioned the Respondent’s corporate name, arguing that this is sufficient, but that the Respondent added the disclaimer noted in the factual background section above on February 7, 2020, and referencing Bialetti Industrie S.p.A. v. Gary Valenti Inc., WIPO Case No. D2019-0190.

The Respondent disputes the Complainant’s suggestion that it is not commonly known by the disputed domain name, submitting that its website has been in operation for months and has received thousands of visitors and users with a steady and substantial amount joining the “email update list” clearly indicating they are interested in the Respondent’s development proposition, for which the site was established.

The Respondent asserts that its use of the Complainant’s mark, rather than being “bait and switch” is purely to indicate the compatibility of Respondent’s product with the products which the Complainant creates, adding that comparative and compatibility advertising have been established to fall under the doctrine of fair use in many jurisdictions, including the United States, where the Respondent is based, and that fair use is a term found in paragraph 4(c)(iii) of the Policy. The Respondent cites NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903 in support of its view that it is making fair use of the Complainant’s mark. The Respondent also refers to Tpresso SA v. Italytrade S.R.L. (Italytrade S.r.l.), WIPO Case No. D2015-1261.

The Respondent notes that Panels under the Policy have applied United States case law when relevant and that the disputed domain name has a close connection with United States jurisdiction due to the location of the Respondent and Registrar, adding that the Complainant also does business in the United States. The Respondent cites various past cases in which it says that United States law has been applied and submits that the registration of a word as a trademark does not prevent others using such trademark in its descriptive sense, nor does it prevent comparative or compatibility advertising, which it says is beneficial to competition. The Respondent also discusses the manner of assessment of trademark infringement under United States law, arguing that “Harmonize, for Philips Hue” falls under the United States category of permissible fair use and that it would have a relevant defense to a trademark infringement action in the United States.

The Respondent discusses a United States case regarding fair use of a trademark, quoting three requirements which it says entitle commercial users to a fair use defense. The Respondent adds that it has complied with said requirements, noting that it has added a disclaimer to the website associated with the disputed domain name. The Respondent also submits that international cases are likewise in its favor, asserting that it has used the Complainant’s mark to indicate an intended purpose of the Respondent’s product and that this is the only means by which the public could be provided with comprehensible and complete information on such intended purpose.

The Respondent contends that it set up a site for development of a product that is clearly distinguishable from the Complainant’s website and brand, that it did not attempt to solicit offers from any entity to sell the disputed domain name, that the disputed domain name was not registered with the purpose of preventing the Complainant from reflecting its mark in a corresponding domain name, that the Respondent never intended to disrupt the Complainant’s business, and that this was not the primary purpose of the registration. The Respondent argues that any commercial advantage gained was in accordance with fair use.

The Respondent disputes the relevance of certain past cases under the Policy cited by the Complainant, indicating that these may be distinguished from the case at hand, noting that “harmonize” is a verb that has nothing to do with the Complainant and that “hue” is a 3-letter commonly-used word meaning colors, which is relevant to the product being developed. The Respondent further asserts that the present case does not constitute a clear bait-and-switch to third party sites for pay-per-click revenue.

The Respondent notes that previously the website at the disputed domain name stated the Respondent’s corporate name and the year at the bottom of the page, adding that on February 7, 2020, the Respondent included the disclaimer described in the factual background section above. The Respondent said that it did this in a show of good faith and an effort to be extremely clear to Internet users. The Respondent asserts that previous panels under the Policy have reviewed changes such as this in their decision, referring to CPA Global Limited v. Perfect Privacy, LLC / Kobre and Kim LLP, WIPO Case No. D2017-1964.

6. Discussion and Findings

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

(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.

A. Identical or Confusingly Similar

It is well accepted that the first element under the Policy functions primarily as a standing requirement and is generally regarded as having a low threshold, the intent being to determine whether the Complainant has “a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). The assessment is typically made, first, by reference to whether the Complainant has relevant rights in a trademark, and secondly, by making a straightforward side-by-side comparison of such trademark with the disputed domain name to determine identity or confusing similarity.

In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its HUE registered trademark, as described in the factual background section above. Comparing such mark to the disputed domain name, it may be seen that the mark is incorporated in its entirety as the second of two word elements, following the word “harmonize”, and is fully recognizable therein. It is generally accepted by panels under the Policy that the addition of one or more other terms along with a trademark, as in the disputed domain name, does not prevent a finding of confusing similarity.

The Panel rejects the Respondent’s argument that in the majority of previous cases under the Policy a finding of confusing similarity is only made where the additional word is geographic or descriptive. This is not the Panel’s direct experience and, furthermore, is not borne out by the consensus views of panels on this topic as set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which notes that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The section goes on to indicate that any such elements may be relevant to a panel’s assessment of the second or third elements under the Policy and the Panel in the present case will deal with the addition of the word “harmonize” to the Complainant’s mark in the disputed domain name accordingly.

In the above circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 essence of the Complainant’s case on this aspect is that the Respondent has no rights or legitimate interests in the disputed domain name because it is a competitor, which is engaged in a bait-and-switch activity in terms of the disputed domain name and related website. The Respondent’s position is that it is not engaged in bait-and-switch but rather is making fair use of the Complainant’s mark, both in the disputed domain name and on the related website, for purely referential purposes.

The Complainant’s case revolves around the principles established by the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. This early case under the Policy has met with widespread approval among subsequent panels and its approach is typically adopted in appropriate cases where a respondent asserts fair use. The panel in that case put forward four conditions which should be met for a respondent, typically a reseller or authorized distributor of a complainant’s goods or services, to be able to establish that it is making nominative fair use of a trademark for the purposes of the Policy, namely: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

In the present case, the Respondent is neither a reseller, nor an authorized or unauthorized distributor of the Complainant’s product. The Respondent does not sell the Complainant’s product at all, but rather is a competitor who is producing a rival system to the Complainant’s “Play HDMI Sync Box” for use with the Complainant’s lighting systems, which are marketed under its HUE trademark. Consequently, this case is not necessarily in classic Oki Data territory. However, if the criteria in Oki Data were to be applied to the present facts, it is clear that the Respondent is offering a third party product, not the trademarked goods or services, that the site did not accurately disclose the registrant’s lack of relationship with the trademark holder prior to the filing of the present Complaint, that the site now acknowledges the Complainant’s trademarks and notes that the Respondent does not have a “direct affiliation” to the Complainant but does not do so prominently, and finally, that there is no evidence that the Respondent has “cornered the market” in relevant domain names. In these circumstances, if the case were to be determined by virtue of the Oki Data criteria specifically, the Panel would have found that the Respondent had not satisfied the first three of the four criteria and thus could not establish fair use.

In cases involving allegations of fair use for commercial purposes, which do not directly relate to the business of a reseller or distributor, a panel may also review more general considerations, such as the criteria provided in section 2.5 of the WIPO Overview 3.0. These general criteria are consistent with, and in fact underpin, the Oki Data principles. Broadly speaking, they focus upon a review of the nature of the disputed domain name itself, along with matters beyond the disputed domain name, including the content of the associated website and the nature of any commercial activity operated there.

Taking the disputed domain name itself first, the Respondent argues that it is improbable that an Internet user would randomly type this in when searching for the Complainant’s trademark. Any such probability or lack thereof is not what the Panel is assessing here. According to the Respondent, many users have already found the disputed domain name by some means or other. The specific manner in which they did so is not relevant here. What is important is the effect of the appearance of the disputed domain name if and when it is encountered by a user. Does the disputed domain name suggest that there is an affiliation between the Respondent and the Complainant or that it is operated, endorsed or sponsored by the Complainant? Alternatively, does it, by its nature, indicate that the Respondent is seeking only to make referential use of the Complainant’s mark?

The disputed domain name consists of a portmanteau word in the second level, “harmonizehue”, which the eye readily separates into the word “harmonize” along with the Complainant’s HUE mark. In the Panel’s view, the fact that the disputed domain name uses an additional word “harmonize” with such mark does nothing to indicate that the Respondent is an unaffiliated entity, but is in fact, a competitor offering a third party product. Indeed, the fact that “harmonize” is a verb, and on its own is in the imperative form, places the principal focus of the disputed domain name on the Complainant’s HUE mark. The Panel considers that the disputed domain name alone is likely, on balance, to lead to confusion whereby visitors may be drawn to the Respondent’s site by “an inference of affiliation”, in the words of section 2.5.1 of the WIPO Overview 3.0. The nature of the disputed domain name itself does not therefore point in the direction of fair use as it is generally understood in terms of the Policy.

A further examination of the broader facts and circumstances of the case, focusing upon the associated website content, fortifies the Panel in its initial impression of the disputed domain name. The Respondent asserts that no “bait and switch” is taking place because no product is yet being offered. Instead, visitors are invited to sign up to a mailing list to receive more details of a product to be launched in “summer 2020”. This strikes the Panel as a somewhat disingenuous argument which in any event takes the Respondent’s case nowhere. The disputed domain name and related website are evidently being used to promote a product which is in competition with that of the Complainant, to the Respondent’s ultimate commercial benefit. Data is being collected from interested parties – this alone would undermine the Respondent’s claim to fair use. The fact that such product is not yet on the market or may still be in development cannot improve the Respondent’s case on fair use.

Looking further into the Respondent’s website, the Panel notes that the language is not exactly unequivocal as to the fact that the Respondent is promoting a third party product, whether or not it is intended to be compatible or to operate in conjunction with the Complainant’s lighting system. The ambiguity of the language is particularly important, in the Panel’s view, because the Parties are in agreement that originally there was no disclaimer present on the Respondent’s website. Clarifying language was only added after the Complaint was filed. The Respondent cites Bialetti Industrie S.p.A. v. Gary Valenti Inc., WIPO Case No. D2019-0190 for the proposition that an express disclaimer is not required, provided that “Contact Us” information is present on an unaffiliated website. However, that is a misreading of the case concerned. That proposition was one of the respondent’s contentions, and was not the basis on which the panel made its determination, which focused principally on a past affiliation between the parties extending over some 50 years. In any event, such a proposition would not reflect the general approach of panels under the Policy. What is required in a case of this nature is that the website does not mislead as to source or sponsorship, something that can be achieved by a clear and prominent statement in the form of a disclaimer and some form of a clear reference or link to the trademark owner’s website.

The Respondent appears to suggest that its late addition of clarifying text, after the filing of the Complaint, is sufficient to avoid or dispel any ambiguity or confusion. The Panel disagrees. The wording concerned is not prominent, being in a comparatively small typeface, which has been inserted at the foot of the webpage. A visitor would have to read the Complainant’s entire landing page, including the invitation to sign up for the mailing list, before encountering it, if at all. The text does not contain a link to the Complainant’s website and is not unambiguous, merely stating that the project “has no direct affiliation” with the Complainant. That suggests that there may be at least some degree of affiliation, however indirect, where there is none.

The Respondent cites CPA Global Limited v. Perfect Privacy, LLC / Kobre and Kim LLP, WIPO Case No. D2017-1964 in support of its contention that it is sufficient to add a disclaimer of this nature after the filing of the Complaint. The panel in that case did indeed make a comment which might point in that general direction but in the present Panel’s view this was based upon the specific and very different facts and circumstances of that case. The domain name in CPA Global contained the complainant’s trademark followed by the suffix “-litigation”. The respondent was coordinating a class action lawsuit against the complainant and the associated website provided information about this. In those specific circumstances, the panel noted that the trademark was not being used to divert the complainant’s own customers misleadingly, adding that “Any Internet user who came across the Respondent’s website when looking for the Complainant would instantly realize their error.” The panel also noted that the complainant and respondent were not competitors. Based on the panel’s review of the nature of the domain name and of the website content, it held that neither was likely to mislead as to source or sponsorship.

By contrast, in the present case, the Parties are competitors. Equally, by contrast, Internet users drawn to the Respondent’s site due to the presence of the Complainant’s mark in the disputed domain name would not “instantly realize their error” upon arrival. The product promoted by the Respondent has the same function as a product marketed by the Complainant. It is not immediately clear that the website is promoting an unaffiliated third party system which is merely intended to work with the Complainant’s lighting products. Due to this ambiguity in the website text, Internet users would probably not realize any error at all unless they read down to the recently inserted disclaimer at the very bottom of the page, and only then if they fully appreciate its import, given its suggestion of some form of indirect affiliation.

The Panel notes the Respondent’s case that previous panels under the Policy have accepted that fair use may be made of a trademark in a domain name in order to indicate the compatibility of a respondent’s product with a product which the trademark owner creates. For example, the Respondent refers to NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903 in this context. However, that case is also substantially different from the present on its facts. It involved various sports team trademarks coupled with the words “seats” and “tickets”, which gave rise to domain names of a very different character than the disputed domain name. The respondent maintained that it had to use the complainant’s marks to be able to identify the source of the tickets or seats which it was reselling. The majority of the panel found that fair use was applicable because the respondent was reselling items originated by the complainant, the complainant was identified as the source of said resold items, and any relationship between such mark holder and the respondent was specifically disclaimed.

In Tpresso SA v. Italytrade S.R.L. (Italytrade S.r.l.), WIPO Case No. D2015-1261, another case cited by the Respondent, the complainant’s mark was found to be suggestive of the descriptive terms “tea” and “espresso” which the respondent was referencing in the disputed domain name. The Panel accepts that the word “hue” can be similarly suggestive of colors or light but the issue for the present Respondent’s case on fair use is that it is not making any kind of descriptive use. Rather, it is making a specific reference to the Complainant’s mark. Tpresso SA is also a case which turned on its own facts, including a background of trademark opposition proceedings between the parties, whereby the panel determined that it was not the proper forum for resolution of the dispute. This is not applicable to the present case.

The Respondent discusses in some detail the approach of United States law relating to fair use as a defense to a claim of trademark infringement. The Respondent’s position appears to be that the Panel should treat the present proceedings under the policy as a United States trademark infringement case and apply United States law. While there may be overlap in the legal concepts applied, this argument is misplaced as the Policy is of universal applicability and proceedings under it are not automatically or necessarily determined in the same manner as a trademark infringement suit in any particular jurisdiction.

In determining a case under the Policy, the Panel shall decide a 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” (see paragraph 15(a) of the Rules). It must be noted that some panels have interpreted that provision to mean that they may apply local law where they consider this to be appropriate. However, that approach has generally been adopted only where both parties are based in the same jurisdiction, which is not the case here. Furthermore, it is not universally accepted that this is the correct interpretation of the reference to “rules and principles of law” in paragraph 15(a) of the Rules (see, for example, the extensive discussion of the topic in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, and the more recent comments of the panel in Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633. The latter case described a “more forceful critique” regarding the application of local law, namely that “[…] panels are charged with applying the Policy and Rules; they are not necessarily experts on every jurisdiction’s local law, and it can be difficult to know which local law to apply if parties come from or use their websites in different jurisdictions”).

In reviewing the Respondent’s submissions on the topic of the applicable United States law, the Panel accepts as a general principle that, subject to certain restrictions or conditions, it can be fair to use the trademark of another in a descriptive sense or for comparative or compatibility advertising. However, even if it were appropriate for the Panel to adopt for present purposes the conditions which the Respondent says would be applied by the United States courts, the Panel doubts on the facts of this case that the Respondent meets those conditions. For example, the Panel does not consider that the Respondent is using only so much of the Complainant’s trademark as is reasonably necessary to identify the product or services, or that the Respondent is doing nothing in conjunction with the trademark as to suggest endorsement by the trademark holder.

In conclusion, the Panel considers that, based upon the nature of the disputed domain name itself and the website to which it is pointed, the Respondent is benefitting unfairly from an absence of clarity as to its lack of affiliation with the Complainant. The Panel is of the view that the disputed domain name is likely to cause user confusion and that the website text is capable of misinterpretation by many visitors in the absence of a clear and prominent disclaimer. The commercial benefit to the Respondent results from a volume of sign-ups to its promotional mailing list, which the Respondent itself describes as a “steady and substantial amount” of users. The bulk of the promotion took place prior to the filing of the present Complaint, after which the Respondent published an insufficiently prominent and partially ambiguous disclaimer at the foot of its homepage. In all of these circumstances, the Panel finds that the Respondent has not made out a case of fair use and therefore that it does not have rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In the present case, it is not necessary to discuss at length the topic of registration and use in bad faith following the detailed assessment of the disputed domain name and associated website in the preceding section. If, where the Parties are competitors, the nature of the disputed domain name is such as to cause confusion with the Complainant’s trademark and the website text does little or nothing to clarify the Respondent’s lack of affiliation with the Complainant, it is probable that the disputed domain name has been registered and is being used in bad faith.

The Panel notes the Respondent’s repeated protestations that it has acted in good faith at all times and has registered and used the disputed domain name for the legitimate promotion of its system, which is intended to work with the Complainant’s product. Nevertheless, registration and use in bad faith within the meaning of the Policy is not a subjective issue based purely on the Respondent’s personal view of its own behavior. The matter must be tested objectively with reference to Policy principles. Where this is done in the present case, and in particular for the reasons outlined in detail in the preceding section with reference to the disputed domain name and website content, it may be seen that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product on such website, in accordance with paragraph 4(b)(iv) of the Policy.

In these circumstances, the Panel finds that the Respondent registered and has been using the disputed domain name in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <harmonizehue.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: March 25, 2020