WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyline Communications NV v. WebMagic Staff, WebMagic Ventures LLC

Case No. D2016-1667

1. The Parties

The Complainant is Skyline Communications NV of Izegem, Belgium, represented internally.

The Respondent is WebMagic Staff, WebMagic Ventures LLC of Pasadena, California, United States of America ("United States"), represented by Oppedahl Patent Law Firm LLC, United States.

2. The Domain Name and Registrar

The disputed domain name, <dataminer.com>, is registered with TierraNet d/b/a DomainDiscover (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 August 23, 2016, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 24, 2016.

The Center verified that the Complaint together with the 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 August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. At the Respondent's request, the due date for Response was extended to September 17, 2016. The Response was filed with the Center September 17, 2016. The Center received an unsolicited Supplemental Filing from the Complainant on September 21, 2016.

The Center appointed Pablo A. Palazzi, Andrew F. Christie and Richard G. Lyon as panelists in this matter on October 11, 2016. 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.

On October 14, 2016, at the Panel's direction the Center advised the Parties: "The Panel disallows the Complainant's Supplemental Filing in accordance with settled Policy precedent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.2, Consensus View. The Panel will include further explication in its Decision. The Panel requests that neither Party submit any further communication to the WIPO Center without the Panel's express direction."

The operative portion of paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides: "The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of 'exceptional' circumstances." The cases that have led to this Consensus View make clear that "exceptional circumstances" ordinarily refers to matters that the party making the submission could not reasonably have anticipated when it submitted its original pleading – manufactured evidence¹, a post-pleading UDRP or court decision that bears on the proceeding², an event occurring subsequently to the original pleading³, for example.

The Complainant's filing was made under the heading "Reply to Respondent's Response". The filing addresses the following matters: (i) why the Complainant's mark should not be considered descriptive, and (ii) a rebuttal that the Respondent's business is a genuine business, including several mentions of the Respondent's registration of its domain names as cybersquatting.

The Complainant here fails that test. The Complainant offers no reason why either matter could not have been anticipated and addressed in the Complaint, or anything else that makes its contents exceptional. A complainant who files a complaint based upon a mark registered well after the domain name may expect to be challenged for filing a baseless complaint.

Accordingly the Panel denies the Complainant's Supplemental Filing, noting also that nothing in the Supplemental Filing would have altered this Decision.

4. Factual Background

The Complainant is a software company located in Belgium. The Complainant has more than 180 employees with offices also in Lisbon and Miami. The sole product of the Complainant is called "Dataminer" and it is a multi-vendor management software.

The Complainant obtained registration of the DATAMINER trademark in Benelux on July 12, 2016. The trademark registration covers goods and services in classes 9, 38 and 42. The Complainant has also applied for an international registration covering several countries which at the time of this decision is pending.

The Complainant is the owner of the domain names <dataminer.co> and <dataminer.tv>.

The disputed domain name was registered on September 13, 1996.

5. Parties' Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

With respect to the rights and legitimate interest of the Respondent, the Complainant states that:

- the Respondent does not use the disputed domain name in connection with a bona fide offer of goods or services.

- the disputed domain name redirects users to the website at "www.ace.com".

- the Respondent has never been known under the disputed domain name as a legal entity.

- the Respondent has not acquired any trademark right in the disputed domain name.

- the Respondent does not have any relationship with the Complainant.

With respect to bad faith registration and use the Complainant states that:

- it is "indisputable" that the Respondent is a cybersquatter.

- the Respondent has registered a multitude of domain names with the sole purpose of preventing others from registering them and subsequently potentially reselling those domain names at a high profit.

- the Respondent and the Complainant have been in contact in the years 2005 and 2010 regarding the possibility of transfer of the disputed domain name.

- there is no history of the disputed domain name in the Internet archive because of the Respondent's use of the "robots.txt" mechanism; this evidences that "Respondent blocked access for Complainant and other third parties to potential evidence for the non-existence of rights or legitimate interests in respect of the [disputed domain name]".

- even if the bad faith mindset of the Respondent at the time of the registration would hypothetically be in doubt, it is clear that the disputed domain name has also been registered in bad faith. The Complainant cites part of the WIPO Overview 2.0 (paragraph 3.1) and Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455,.

- the Respondent's registration and use of the disputed domain name interferes with the Complainant's business and activities. By blocking the disputed domain name the Respondent is interfering with the Complainant's ability to fully promote its trademark and control the image and information associated with its trademark and logo.

- it is clear from the emails interchanged between the Respondent and the Complainant that it is the Respondent's intention to capitalize on the disputed domain name: the Respondent is willing to transfer the disputed domain name, but will not transfer it for out-of-pockets costs.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent requests the Panel to reject the Complaint based in the following:

- the disputed domain name was registered nearly 20 years ago.

- the Complainant started use of the "Dataminer" name in Belgium no earlier than about 2001, 2002 or 2003.

- the Complainant contacted the Respondent in 2005 to purchase the disputed domain name and did not succeed. It then contacted again the Respondent in 2010, making an unsolicited offer acknowledging that the Respondent was the owner of the disputed domain name. In 2014, the Complainant made another unsolicited and unsuccessful offer.

- there is no registration in bad faith because the disputed domain name was registered in the year 1996.

- there is nothing in the Complaint explaining why the disputed domain name may have been registered in bad faith in the year 1996.

- The Complainant's use of the DATAMINER trademark commenced years after the Respondent's registration of the disputed domain name.

- The Respondent is entitled to legitimate use of a dictionary word.

- The Complainant's delay of 20 years is unreasonable.

- The Complainant inaccurately represented the text and holding of one of the UDRP decisions that it cited.

- The Complainant's reference to communications between the Parties is incomplete.

Finally the Respondent requests the Panel to find Reverse Domain Name Hijacking based on the following:

- the Complainant is represented by Counsel.

- The Complainant knew or should have known at the time of the filing of the Complaint that it could not prove one of the essential elements required by the Policy.

- The Respondent lists several additional grounds for a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the mark DATAMINER. The disputed domain name <dataminer.com> features the word "dataminer". The generic Top-Level Domain ("gTLD") designation ".com" may be disregarded. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is not required to address this element of the Policy in light of its findings on the third element.

C. Registered and Used in Bad Faith

The first part of paragraph 3.1 of the WIPO Overview 2.0 provides, "Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date . . . when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right".

The Respondent registered the disputed domain name on September 13, 1996. The Complainant applied for the trademark DATAMINER in the Benelux registry on September 21, 2015. The trademark registration was granted on July 12, 2016.

Therefore, in this case, the disputed domain name was not registered in bad faith because at the time of registration of the domain name the Respondent could not have been aware of the Complainant's trademark. It would be logically impossible for the Respondent to have acted in bad faith with respect to rights that did not exist at the time.

In addition, the Respondent has not used the disputed domain name to target the Complainant or the Complainant's competitors. The Complainant does not even plead that the Respondent did so; its allegations are that the Respondent's sole business is trafficking in domain names which "prevents others from registering [such domain names]", for potential resale at a profit (Amended Complaint, p. 9); and that the Respondent wouldn't sell the disputed domain name to the Complainant at the Complainant's preferred price. The latter basis is a matter for the marketplace, as even the Complainant acknowledges that it and not the Respondent initiated the inquiries to buy the disputed domain name. The former stands entirely on the Complainant's characterization of the Respondent's business as "cybersquatting" without pleading (much less proving) one instance in which a court or UDRP panel found that to be so. In fact the almost uniform view present in UDRP decisions is that buying and selling domain names is not per se bad faith⁴ absent an intent to exploit the value of the complainant's mark.

The Panel notes that paragraph 4(b)(i) of the Policy, upon which the Complainant's charge is based, calls for registration of 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". That is not possible if the domain name – as in this case – was registered before the Complainant's trademark existed.

The Complainant has failed to demonstrate that the Respondent registered and is using the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that a complainant has brought the complaint in bad faith (for example in an attempt at reverse domain name hijacking, or was brought primarily to harass the domain name holder). "Reverse domain name hijacking" is defined in the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". Mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking.

In the view of the Panel this is a complaint which should never have been launched. The Complainant and its lawyer should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered nearly two decades ago was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. The Complainant should have known that there was no case under the third requirement of the Policy, due to the lack of any use in bad faith of the disputed domain name. In the Complaint, no attempt was made to demonstrate the existence of bad faith registration or bad faith use. In addition, the Complainant contacted the Respondent several times in the years 2005, 2010 and 2014 to try to buy the disputed domain name with no success. After its trademark was registered, the Complainant decided to launch this complaint under the Policy. Finally there are several of the Complainant's factual and legal contentions that border on the misleading. As an example the Panel mentions the incomplete quote of the holding in the Torus case, as pointed out by the Respondent; mischaracterizing the Respondent's business (see Response, Annexes 5 and 6); referring to the Respondent's activities as "cybersquatting" on no more authority than its own judgment (a search by the Panel found no case in which the Respondent was a respondent on the WIPO data base and only two cases on the National Arbitration Forum data base, in both of which the complaint was denied); and calling its mark "not descriptive".

Therefore, the Panel finds that the 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 Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.

Pablo A. Palazzi
Presiding Panelist

Andrew F. Christie
Panelist

Richard G. Lyon
Panelist
Date: October 25, 2016

¹E.g., Edward G. Linskey Jr. v. Brian Valentine, WIPO Case No. D2006-0706.

² E.g., Twitter, Inc. v. Geigo, Inc., WIPO Case No. D2011-1210.

³E.g., Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193.

⁴E.g,. Automóviles de Luarca, S.A. v. NUCOM, Domain Name Brokers, WIPO Case No. D2005-0282.