Complainant is Gesab, S.A. of Barcelona, Spain, represented by Bellavista, Spain.
Respondent is Domain Admin of Oslo, Norway / Oyo AS of Oslo, Norway, represented by Andrii Raetskiy, Ukraine.
The disputed domain name <deskwall.com> is registered with NamePal.com, LLC (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 14, 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 Complainant on June 25, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 26, 2018.
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 Respondent of the Complaint, and the proceedings commenced on June 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2018. The Response was filed with the Center on July 17, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 24, 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.
Complainant is a Spanish company that developed a system called “DeskWall” for virtual platforms and operators. On May 10, 2017, Complainant first registered the DESKWALL trademark with the European Union Intellectual Property Office (Registration No. 016241929). Complainant features its products and services (including its “DeskWall” system) on the website “www.gesab.com”.
Respondent is a Norway-based registrant of the disputed domain name <deskwall.com>. Respondent registered the disputed domain name on May 15, 2015.
Complainant asserts that the disputed domain name is identical to the DESKWALL mark in which it has rights as evidenced by its trademark registration. According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name because Respondent registered the disputed domain name for “speculative and commercial reasons” as evidenced by the fact that Respondent is in the business of selling and purchasing domain names, the disputed domain name resolved to a webpage soliciting purchasers, and Respondent is not known by the disputed domain name. Moreover, Complainant contends that Respondent registered and is using <deskwall.com> in bad faith because Respondent registered the disputed domain name primarily for selling it for an inflated sum, as evidenced by the fact that Respondent initially offered to sell the disputed domain name to Complainant for USD 6,399.00. Complainant argues that the fact that Respondent registered the disputed domain name before Complainant’s trademark registration should not sway the Panel’s analysis considering Respondent’s business strategy.
Respondent does not challenge Complainant’s contention that the disputed domain name is identical to the DESKWALL mark. Rather, Respondent appears to argue that Complainant has failed to show that it has rights in the trademark because the “trademark contains descriptive elements.” Respondent allegedly registered the disputed domain name because it was an “attractive combination of the dictionary words ‘desk’ and ‘wall’ ” and contends that Complainant cannot show that Respondent has no rights or interests in the disputed domain name. Respondent argues that it registered the disputed domain name before Complainant’s registration of the DESKWALL mark and Complainant has presented no evidence to show that Respondent knew or should have known of Complainant’s “DeskWall” system at the time of the registration and, thus, targeted Complainant’s rights. For the same reason, Respondent maintains that Complainant cannot show that Respondent acted in bad faith. Respondent also contends that Complainant’s filing of this “bare bones” Complaint warrants a finding of Reverse Domain Name Hijacking.
The Panel finds that Complaint has established that it has trademark rights in DESKWALL by virtue of its trademark registration and further finds that the disputed domain name is confusingly similar to Complainant’s mark as it consists in relevant part of the term “DeskWall.”
Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy.
Because Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy, the Panel need not address whether Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii).
The Panel finds that Complainant has not satisfied paragraph 4(a)(iii) of the Policy. Specifically, the record is entirely devoid of evidence supporting Complainant’s use or preparation to use its “DeskWall” system in commerce before Respondent registered the disputed domain name. Complainant does not allege or offer evidence that it acquired trademark rights before Respondent registered the disputed domain name. There is nothing in the record to support a reasonable inference that Respondent was aware of Complainant’s rights at the time of registration of the disputed domain name. This deficiency is fatal to Complainant’s claim that Respondent registered the disputed domain name in bad faith. Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.8.1. Cf Timothy Pearson v. Domain Admin, OYO AS, WIPO Case No. D2016-0203 (finding bad faith where the domain name registration preceded the trademark registration because the evidence indicated that the complainant had “clearly used the name ‘Raptor Engineering’ in a trademark sense prior to the date of registration of the Domain Name”).
Paragraph 15(e) of the Rules provides that, 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.” RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel considers that Complainant has attempted RDNH for the following reasons:
1. Complainant has failed in its Complaint by a large margin. In the Panel's opinion, Complainant knew or at least should have known that it could not prove registration and use in bad faith. As explained earlier, however, Complainant came nowhere near building a case for this essential UDRP element. Complainant should have known that its failure to even allege a senior right in the DESKWALL mark was likely to prove fatal to its prospects in this proceeding.
2. Furthermore, before launching this case, Complainant contacted Respondent and offered to buy the disputed domain name for USD 500, without offering any arguments that it possessed a legal claim relating to the disputed domain name. In the Panel’s view, this is another example of a case where a party, frustrated in its attempt to buy a domain name, resorts to the ultimate option of an artificial claim untethered to facts or the plain wording of the UDRP. This stratagem has been described in many UDRP cases as “a highly improper purpose” and it has often contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 and BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016‑1811.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Lawrence K. Nodine
Date: August 7, 2018
Stay updated! Get new cases and decisions by daily email.