The Complainant is Thomas Wang of San Diego, California, United States of America ("United States"),
The Respondent is Privacydotlink Customer 546843 of Seven Mile Beach, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Blue Nova Inc. of St. Michael, Barbados, represented by ESQwire.com P.C., United States.
The disputed domain name <yish.com> is registered with Uniregistrar Corp (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 13, 2018. On June 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2018, 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 June 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On June 19, 2018, the Complainant responded to the Center's email contending that the WhoIs information provided by the Registrar was in breach of the Policy and electing to continue with the Complaint in unamended form.
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 June 19, 2018. In accordance with the Rules, paragraph 5 and following the Respondent's request for an extension of time, the due date for Response was July 13, 2018. The Response was filed with the Center on July 13, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 13, 2018. 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.
Between August 2, 2018 and August 9, 2018, there was an exchange of emails between the Complainant, Mr. Wang, the Center, and the Respondent, Blue Nova Inc. in relation to the Complainant's request to withdraw or terminate the Complaint.
On August 30, 2001, the disputed domain name was registered by Vertical Axis Inc. On June 1, 2015, Vertical Axis Inc. changed its name to Blue Nova Inc.
On June 21, 2017 the Complainant filed an application to register "Yish" as a trademark in the United States. On March 13, 2018, the trademark was registered, Trademark No. 5,425,235, YISH for a range of computer services in International Class 42.
The Certificate of Registration claims the first use in commerce (in the United States) on June 15, 2017. According to the Complaint, that is the date when the Complainant (and perhaps his business partner) began offering for sale his "Yish"-branded computer software from websites at the domain names the Complainant had registered, <yishapp.com>, <yish.co>, <yish.app>, <yish.io> and <yish.menu>. At some point, there was also a "Yish" app available through the "Apple App Store".
On May 4, 2018, the Complainant incorporated a company, Yish Inc., to carry on the business.
The disputed domain name resolves to a pay-per-click parking page. At the top of the page is a green banner with a link "Make a Purchase offer on this Domain". The Complainant clicked on that link and made offers to purchase the disputed domain name for USD 9,000 and USD 10,000, both of which were rejected.
The dates when these offers were made and rejected is not clear. From the printouts included in the annexes to the Complaint, it appears that they were made between 5 days and 18 hours before the Complaint was filed with the Center.
At some point (presumably after the Complaint was filed and possibly after receipt of the Response), the Complainant and his business partner decided to wind up Yish Inc.
At the time this decision is being prepared, the domain name <yishapp.com> redirects to the domain name <yish.app>. The domain name <yish.app>, however, no longer resolves to an active website. The domain names <yish.co> and <yish.io> resolve to a parking page with pay-per-click links to a range of services such as car insurance, credit cards, life insurance, cheap flights, the Internet, and "Dentist". The domain name <yish.menu> does not resolve to an active webpage of any kind.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
Before proceeding to consider the substantive issues, there are two preliminary issues that need to be resolved: who is the Respondent and the Complainant's request to withdraw the Complaint.
Although the Center advised the Complainant of the full WhoIs details provided by the Registrar in response to the request for registrar verification, the Complainant chose not to amend the Complaint. It appears that the Complainant contends that the registrant when the Complaint was filed was the Registrar through its Privacy Service.
Paragraph 1 of the Rules defines the "respondent" for the purposes of a complaint under the Policy as:
"the holder of [the] domain-name registration against which [the] complaint is initiated."
On its face, this definition does not specify whether the "holder" is the person formally named or, if someone such as a trustee or agent is named, the principal or beneficiary behind the nominee.
The Complainant relies on a statement on the ICANN website: 1
"In some cases, a person or organization who does not wish to have their information listed in WhoIs may contract with a proxy service provider to register domain names on their behalf. In this case, the service provider is the domain name registrant, not the end customer."
Apart from any other questions that may arise about the status of this statement, the Panel notes that on May 17, 2018 (that is, before the Complaint was filed) the ICANN Board adopted a "Temporary Specification for gTLD Registration Data" in response to the entry into force of the Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC ("General Data Protection Regulation" or "GDPR"). 2 Section 2.6 of that Temporary Specification provides:
"2.6. Notwithstanding Sections 2.2, 2.3, 2.4, and 2.5 of this Appendix, in the case of a domain name registration where a privacy/proxy service used (e.g. where data associated with a natural person is masked), Registrar MUST return in response to any query full WhoIs data, including the existing proxy/proxy pseudonymized email."
So, it appears that to the extent the statement relied on by the Complainant has any binding force, it has been superseded.
In any event, it is unnecessary to resolve that question on the facts in this case.
When the Complaint was filed, the publicly available WhoIs information showed the registrant as "PRIVACYDOTLINK CUSTOMER 546843", with an address in the Cayman Islands.
"PrivacyDotLink" or more accurately "Privacy.Link" is the WhoIs privacy service operated by the Registrar.
"Customer 546843" is the unique identifier maintained by the Registrar to identify which of its customers is the holder of the domain name in question. Further, the WhoIs details on which the Complainant relies identified the registrant's email address as "[email protected]", which is an email address provided for the actual (or true, to use the Registrar's own words) registrant of the disputed domain name to receive communications about the disputed domain name. 3 The Panel notes that the Registrar's approach appears to be consistent with paragraph 2.6 of ICANN's Temporary Specification.
In these circumstances, the Panel considers that the WhoIs details publicly available when the Complaint was filed identified the holder of the disputed domain name specifically as Customer 546834, the person now known to be Blue Nova Inc. The Complaint as filed named the respondent in terms which identify the true registrant, not the Registrar's privacy service. Accordingly, the Panel considers that the issues raised in Elvstrom Sails A/S v. Moniker Privacy Services, WIPO Case No. D2008-0393 do not arise.
The Panel will proceed therefore on the basis that the Respondent is Blue Nova Inc. and references to the Respondent should be so understood.
On August 2, 2018, the Center received a request from Mr. Wang advising that his company, Yish Inc., was in the process of being wound up and requesting termination of the proceeding as he would no longer require the disputed domain name and so wished to withdraw the Complaint.
On August 6, 2018, the Respondent filed a response objecting to termination of the proceeding, but proposing that it continue on the basis of a single-member panel.
Paragraph 17 of the Rules relevantly provides:
"(a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. …
(b) If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel."
The requirements of paragraph 17(a) have not been met as the Respondent has not agreed to the withdrawal proposed by the Complainant.
It is not impossible to continue with the administrative proceeding. Under paragraph 17(b), therefore, the question is whether it is unnecessary to continue.
First, it is unclear from the Complainant's communications whether dismissal with or without prejudice was being proposed. The significance of this is that, if the dismissal is not clearly "with prejudice", the Complainant may be able to refile the Complaint at some later time. As other UDRP panels have pointed out, that could be an instrument of oppression especially where, as here, the Respondent has been put to the trouble and expense of preparing and submitting a Response. As a general rule, panels under the Policy have accepted that there should be finality of "litigation" in that a party should not be vexed twice by the same dispute. See e.g., Comité Interprofessionnel du vin de Champagne v. Steven Vickers, WIPO Case No. DCO2011-0026 and, on refiling, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.18.
Although the Complainant has provided submissions in answer to the Respondent's objection to termination in which the question was squarely raised, the Complainant has not clarified that dismissal with prejudice was contemplated. That leaves open the inference that, despite the winding up of his current company, the Complainant may preserve the option of challenging the disputed domain name later.
Secondly, the Respondent has requested a finding of Reverse Domain Name Hijacking. The Complainant has raised points in rebuttal of the Respondent's claim. It is more appropriate that the Complainant's contentions in rebuttal of Reverse Domain Name Hijacking be dealt with in consideration of the substantive issue rather than as some form of summary conclusion.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of United States Registered Trademark No. 5,425,235 for YISH referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ".com" gTLD, the disputed domain name is identical to the Complainant's trademark. Accordingly, the Panel finds that the Complainant has established the requirement under the first limb of the Policy.
In the circumstances of this administrative proceeding, it appropriate to consider the third requirement under the Policy next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
The Complainant contends this requirement is satisfied because the Respondent has not used the disputed domain name actively for more than 10 years and only registered it with an intent to sell it "speculatively". The Complainant also points out that the Respondent has used a privacy registration service "so they do not have a right to the domain" and has requested payment in excess of USD 10,000.
The Respondent says that it has a business of registering short or memorable words as domain names for their intrinsic value. The Respondent also points out that its use of the disputed domain name has not involved any attempt to trade on the goodwill associated with the Complainant's trademark. Rather, the Respondent provides evidence that "Yish" means "my salvation" in Hebrew. The Complainant's own registration certificate bears the endorsement that "Yish" means "to eat". According to the Respondent, that is the Uzbeki meaning of the word.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
That is simply not possible in the present case as the disputed domain name was registered by the Respondent some 16 years before the Complainant even adopted the name "Yish". The Respondent registered the disputed domain name so long before the Complainant commenced his activities that there can be no suggestion the Respondent was seeking to capitalize on the Complainant's nascent or as yet inchoate rights. The circumstances contemplated in WIPO Overview 3.0, section 3.8.2 do not arise.
In these circumstances, the Complainant has failed to demonstrate that the Respondent registered the disputed domain name in bad faith. Therefore, the Complaint must fail.
In the circumstances, no good purpose would be served by considering this requirement as the Complaint must fail in any event.
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides, in part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
The fact that the Complaint has failed is not in itself a ground for a finding of Reverse Domain Name Hijacking. There must be conduct which takes matters outside a good faith use of the Policy and which can properly be described as an abuse of the rights available through the Policy.
It is clear that the Complainant filed the Complaint well-knowing that the disputed domain name had been registered many years before the Complainant started his business under the name "Yish" or accrued any rights in that term.
The Complainant advances two reasons why a finding of Reverse Domain Name Hijacking should not be made. First, the Complainant relies on his wish to terminate the proceeding expressed after the filing of the Response. Secondly, the Complainant relies on the Respondent's use of the privacy protection service so that the WhoIs data did not reveal its identity.
There are two answers to this. First, the WhoIs data relied on by the Complainant did in fact include, as required by ICANN, an email contact address for "Registrant Email". The Complainant has not suggested that he attempted to use that email address at any time.
Secondly, the full identity of the Respondent was provided to the Complainant by the Center on receipt of the Registrar Verification. Once provided with that information, the Complainant elected to press on with the Complaint. The Complainant in fact made no attempt to amend his Complaint. The Complainant did so in full knowledge that the disputed domain name had been registered in 2001 and used in the way identified since then. In turn, the Complainant's decision to continue with the Complaint forced the Respondent to prepare and file a Response if it wished to retain the disputed domain name.
The Panel also notes that the Complainant has not disclosed at any point when the decision to wind up his company Yish Inc. was made. Nor, despite the point being raised directly by the Respondent has the Complainant at any point clarified whether termination should be "with prejudice" or "without prejudice".
The length of time the disputed domain name was registered before the Complainant had any rights in his trademark means that the Complainant should certainly have appreciated that he had no prospects of establishing the disputed domain name was registered in bad faith. The Panel finds therefore that the bringing of the Complaint in those circumstances constituted an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: August 27, 2018
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