The Complainant is Play Hawkers, S.L., Spain, represented by ECIJA, Spain.
The Respondent is Mark Sutin, MediaWizard Systems Inc., Canada, self-represented.
The disputed domain name <hawkers.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2020, 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 May 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2020. On May 20 and 25, 2020, the Center received two email communications from the Respondent, requesting an extension to file a Response. Pursuant to paragraph 5(e) of the Rules, the Response due date was extended to June 6, 2020. The Response was filed with the Center on June 5, 2020. On June 6, 2020, the Complainant submitted a supplemental filing. On June 9 and 10, 2020, the Respondent submitted a supplemental filing.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 8, 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.
The Complainant is a limited liability company established under Spanish law in December 2013 and headquartered in Elche, Spain. The Complainant sells sunglasses and other fashion accessories with the HAWKERS mark through its websites; the products are sold as well through third-party websites and retail stores, including those serving markets to which it appears that the Complainant does not deliver directly from its own websites, such as Canada and the United States of America (“United States”). Its business model involves marketing by means of contracts with celebrity influencers and professional sports sponsorships, such as those with world-famous footballer Lionel Messi and the Los Angeles Lakers basketball franchise in the United States. Launched in 2014, the Company’s business grew quickly from revenues of EUR 6 million that year to nearly EUR 46 million in 2017.
The websites operated by the Complainant, in multiple languages, are associated with domain names based on the HAWKERS mark: <hawkersco.com>, <hawkers.com.es>, <hawkers.com.tr>, <hawkers.es>, <hawkers.cn>, <hawkers.pe>, <hawkers.co>, <hawkersgroup.com>, <hawkersgroup.es>, <hawkersco.co.uk>, <hawkersco.cl>, <hawkersco.com.es>, <hawkersco.es>, <hawkerscolombia.co>, <hawkersmexico.com>, and <hawkersaustralia.com>.
The Complainant holds numerous trademark registrations, including these:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
H HAWKERS (word) |
Spain |
M3595887 |
May 23, 2016 |
|
HAWKERS (figurative [stylized letters]) |
European Union |
016774275 |
May 25, 2017 |
|
H HAWKERS (words and design) |
Canada |
TMA977295 |
August 1, 2017 |
|
H HAWKERS (stylized letters) |
United States |
5505490 |
July 3, 2018 |
|
HAWKERS (standard characters) |
United States |
6077814 |
June 16, 2020 |
The Complainant did not hold the Domain Name, however, which would be the simplest representation of the HAWKERS mark in the most popular generic Top-Level Domain (“gTLD”), “.com”. According to the Registrar, the Domain Name was created on November 17, 1998 and is registered in the name of the Respondent MediaWizard Systems Inc. of British Columbia, Canada. The Respondent Mark Sutin corresponded with the Center after receiving notice of the Complaint in this proceeding, requesting an extension of time to file a Response, using an email address in the domain of <mediawizard.ca>. Mr. Sutin subsequently filed a Response in this proceeding, explaining that he was formerly the sole owner of MediaWizard Systems Inc. and that company has since been wound up. The Registrar’s WhoIs database has not been updated, however. Accordingly, for purposes of this Decision, the Panel refers to Mr. Sutin and MediaWizard Systems Inc. collectively as the “Respondent”.
The Complainant demonstrates with historical screenshots culled from the Internet Archive’s Wayback Machine that the Domain Name was not used for a fully developed website and has likely changed hands since its creation in 1998. For some time in 2017, it was advertised for sale as a “premium site”, and in 2018 the landing page invited brokers to contact the Respondent. Since notice of this Complaint, a limited website (the “Respondent’s website”) has been published under the heading, “Hawkers”, “Buy and Sell Everything in the World”, with photos and descriptions of items for sale and Mr. Sutin’s contact details. A disclaimer of affiliation with the Complainant is posted at the top of the page.
According to the Response, the Respondent acquired the Domain Name in 2005 for USD 1,800 and began to develop a website where people could “hawk” items they wanted to sell. The Response attaches successive “prototype” versions of the website, from 2005, 2007, 2012, 2013, and 2016. It does not appear that any of these were commercially launched, but the Respondent states that work resumed on a new version in 2019.
The Respondent reports that the Complainant contacted the Respondent in 2015 and offered to purchase the Domain Name, “but the parties could not reach a deal”.
The Complainant contends that the Domain Name is confusingly similar to its registered HAWKERS marks. Pointing to gaps in the Wayback Machine history and the landing pages offering the Domain Name for sale in 2017 and 2018, the Complainant concludes that the Respondent likely acquired the Domain Name “recently”, probably in 2017, after the Complainant’s mark was well known internationally. The Complainant asserts that the Respondent had neither permission nor any other rights or legitimate interests. The Complainant argues that the Respondent had no legitimate reason to hold onto the Domain Name, and therefore the effort to auction it as a “premium name” was in bad faith.
The Complainant’s supplemental filing asserts that the Respondent made repeated demands for the purchase of the Domain Name after receiving notice of the Complaint and contends that the Respondent’s claim to have acquired the Domain Name in 2005 is not supported by any proof of purchase.
The Respondent does not challenge the Complainant’s marks but argues that the Respondent held the Domain Name for development long before the Complainant launched its business or established trademarks. The Domain Name “was acquired for the purpose of developing a merchandise trading system on the Internet”, which “has always been a long-term project”.
The Respondent states that it is not interested in pursuing a claim for Reverse Domain Name Hijacking.
In its supplemental filing, the Respondent points to the annexes submitted with the Response demonstrating development efforts for a website associated with the Domain Name over a period of fifteen years. The Respondent also attaches an annex with copies of purchase receipts from the Registrar for registration of the Domain Name (along with several other listed domain names) for every year from 2005 through 2019.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Neither the Policy nor the Rules contemplate amendments to complaints or responses, or supplemental filings, except in response to a deficiency notification or if requested by the Center or the Panel. Supplemental filings are generally discouraged in the interest of conducting expeditious administrative proceedings. UDRP panels generally look for “exceptional circumstances”, such as the discovery of material new evidence or a compelling need to reply to unanticipated arguments, to justify potential delays and burdens on the parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
In this case, the Complainant submitted information about post-filing conduct and a reply to the Respondent’s assertions that it acquired the Domain Name in 2005. This is specific, new evidence and the Panel will consider it, as it also takes into account the Respondent’s supplemental filing and attachments in reply.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name incorporates the principal textual element of the Complainant’s registered HAWKERS marks. The gTLD “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. Id., section 1.11.2.
The Panel concludes, therefore, that the first element of the Complaint has been established.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent has adduced some evidence of demonstrable preparations to use the Domain Name in connection with a merchandising website for which the Domain Name would have a relevant generic sense, although in fifteen years these plans have not come to fruition. Given the Panel’s conclusions on the third element of the Complaint, however, it is not necessary to determine whether this is sufficient to establish rights or legitimate interests within the meaning of the Policy, paragraph 4(c)(i). See WIPO Overview 3.0, section 2.2.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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; …”
The Complainant infers from very scanty facts that the Respondent must have acquired the Domain Name in or around 2017, after the Complainant’s mark became well known, and then advertised the Domain Name for sale hoping to extract an exorbitant price for it. As the Domain Name was created many years before the Complainant came into existence and consists of a single English word with several useful generic meanings, this is an uphill argument. In fact, as the supplemental filings demonstrate beyond reasonable doubt, it turns out that the Respondent has documentary proof that it purchased the Domain Name seven years before the Complainant was established as a company and began applying for trademarks. There is also evidence in the record that the Respondent began at that time to develop a prototype for a relevant merchandising website. It is simply not possible on these facts to find bad faith in the registration of the Domain Name.
Indeed, the Panel would be inclined to enter a finding of Reverse Domain Name Hijacking were it not the case that (a) there was inconclusive evidence concerning the timing of the Respondent’s acquisition of the Domain Name until this proceeding, (b) the Respondent offered no supporting evidence for its assertion that the Complainant contacted the Respondent about purchasing the Domain Name in 2015, and (c) the Respondent expressly declined to request a finding of Reverse Domain Name Hijacking.
The Panel concludes, in any event, that the Complainant has not established the third element of the Complaint.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: July 22, 2020