WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shopify Inc. v. Private Registrant, Digital Privacy Corporation / Denis Dulici

Case No. D2017-1205

1. The Parties

The Complainant is Shopify Inc. of Ottawa, Canada, represented by Gowlings WLG (Canada) LLP, Canada.

The Respondent is Private Registrant, Digital Privacy Corporation of Vista, California, United States of America (“United States”) / Denis Dulici of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <shopify.cloud> (‘the Domain Name’) is registered with 101domain GRS Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 11, 2017.

The Center verified that the Complaint together with the amended Complaint (hereinafter referred to both together as 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 July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2017.

The Center appointed Dawn Osborne as the sole panelist in this matter on August 4, 2017. 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 operating a cloud-based, multi-channel commerce platform for small and medium sized businesses in approximately 175 countries and owns, inter alia, trade mark registrations for SHOPIFY in the United States, Canada and the European Union registered first in time in 2010. In this context, the Complainant owns United States trade mark registration number 3840412 for SHOPIFY, registered on August 31, 2010.

The Domain Name, registered on February 16, 2016, has not been used.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

The Complainant is the leading cloud based multi channel commerce platform designed for small and medium businesses. It owns, inter alia, trade mark registrations for SHOPIFY in the United States, Canada and the European Union and has used this mark since at least 2006 in relation to its services.

The Domain Name is identical to the Complainant’s trade mark for the purposes of the Policy as the addition of a generic Top-Level Domain (“gTLD”) is not considered when determining the issue of similarity.

The Respondent registered the Domain Name on February 16, 2016. The Domain Name is inactive.

Use which intentionally trades on the notoriety of another cannot constitute a bona fide offering of goods or services and there is no evidence of any bona fide use in any event. The Respondent is not authorized by the Complainant to use the SHOPIFY trade mark. The Respondent has not been commonly known by the Domain Name. The Domain Name has not been used for a legitimate noncommercial or fair use.

The Respondent did not reply to the cease-and-desist letters from the Complainant.

The Respondent has been involved in at least three UDRP proceedings where in each case a finding of bad faith was made. The Respondent has engaged in a pattern of registering domain names that incorporate third party marks to which it is not entitled to cause confusion on the Internet and has prevented the Complainant from registering the Domain Name.

The Domain Name has been registered and used in bad faith as part of a pattern of registering domain names that contain third party trade marks and preventing the Complainant from registering the Domain Name. Likelihood of confusion if used is also a ground for a finding of bad faith.

Furthermore, the Respondent is a software developer and direct competitor of the Complainant who has registered the Domain Name to disrupt the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Identical or Confusingly Similar

The Domain Name consists of the Complainant’s registered SHOPIFY mark and the gTLD “.cloud”.

The gTLD “.cloud” does not serve to distinguish the Domain Name from the SHOPIFY mark, which is the distinctive component of the Domain Name.

Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainant has rights.

As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.

There has been no use of the Domain Name.

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

The Respondent has not answered this Complaint or explained why it registered a domain name containing the Complainant’s mark. Moreover, the Respondent is a competitor of the Complainant.

The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel notes that the Respondent neither replied to the Complaint nor to the Complainant’s cease-and-desist letters and concealed its identity.

It also seems that the Respondent has registered three other domain names containing third party trade marks and has been the subject of findings of bad faith in relation to these under the UDRP Policy. It also seems, therefore, that this registration is part of a pattern of such registrations and has prevented the Complainant from registering the Domain Name.

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.

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 Domain Name, <shopify.cloud> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: August 11, 2017