The Complainant is WEDIA SA of Paris, France, represented internally.
The Respondent is Office Yui Asia Limited of Fujisawa, Japan.
The disputed domain name <wedia.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2018. On September 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2018, 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. The complaint sent by courier was received and signed for by the Respondent. The proceedings commenced on September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on October 23, 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.
The Complainant is incorporated in France and listed on Euronext Growth Paris and carries on the business of providing software solutions and services for marketing and communication stakeholders. 67.6 per cent of the Complainant’s sales are in France.
The Complainant is the owner of several trademarks in the name WEDIA, including French trademark No. 3388100 registered in 2005 and an international trademark No. 1413741 registered with effect from 2018 in various countries. Notably, however, the Complainant has no trade mark registrations in Japan.
Since 2007, the Complainant has been the owner of the domain name <wedia.fr> and also owns other domain names incorporating the trademark WEDIA.
The Respondent is a Japanese corporation with its registered business address in Kanagawa, Japan.
The disputed domain name <wedia.com> was registered by the Respondent on June 15, 1997, which resolves to a website that since 2013 has been inactive except for a notice to customers advising of the cessation the whole of its business.
Identical or confusingly similar
The Complainant submits that the disputed domain name contains its registered trademark WEDIA in full so that the public may believe that the disputed domain name is connected to the Complainant.
No rights or legitimate interests
The Complainant submits that the Respondent does not own the trademark WEDIA, is not commonly known by the disputed domain name and has no rights or legitimate interests in the trademark WEDIA.
The Complainant also submits that the Complainant has not licensed or otherwise granted permission to the Respondent to make use of its WEDIA trademark or the disputed domain name.
Registered and is being used in bad faith
The Complainant submits that the disputed domain name disrupts the Complainant’s business because it resolves to a website that displays a business cessation notice and this can therefore make a potential customer believe that the Complainant has ceased business.
The Complainant further submits that as the disputed domain name has been inactive since 2013, but the contact information for the Respondent is either incorrect or inactive, this shows the Respondent has no intention to use the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name <wedia.com> is, other than the generic Top Level Domain (“gTLD”) .com identical to the Complainant’s WEDIA trademark. The gTLD should generally be disregarded when considering the first element of paragraph 4(a) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11)
The Panel notes that the Complainant does not have a registered trademark for WEDIA in Japan. However, the jurisdiction where the Complainant’s trademark is valid is not considered relevant to assessment under the first element, and the ownership of a trademark is generally considered to be a threshold standing issue. (See sections 1.1, 1.7 of the WIPO Overview 3.0)
The first element of paragraph 4(a) of the Policy is therefore satisfied.
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests in the disputed domain name.
However, the evidence filed does suggest that until its business closed in 2013, a company called Planning Office Wedia Co Ltd was using the domain name to sell Chinese language teaching materials in Japan. The Complainant has made no complaint about this historical use of the domain name nor provided any evidence that Planning Office Wedia Co Ltd was improperly using the name “Wedia”.
The Panel is not prepared in these circumstances, and where the Complainant has no trademark rights in Japan, to find that the Respondent has no rights and interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is not satisfied.
Given the finding in relation to rights and legitimate interests, the Panel does not, strictly speaking, need to deal with the question of registration and use in bad faith. Nevertheless, because the Panel needs to consider whether to make a finding of Reverse Domain Name Hijacking, the panel will consider the arguments of the Complainant.
The Complainant argued the Respondent is using the disputed domain name in bad faith based on (1) disruption to the Complainant’s business because the disputed domain name resolves to a website that displays a business cessation notice and a potential customer may thus be led to believe that the Complainant has ceased business and (2) that this shows the Respondent has since 2013 had no intention to use the disputed domain name in connection with a bona fide offering of goods and services.
For the Complaint to succeed under the Policy, however, the Complainant must show the Respondent both registered the disputed domain name in bad faith and is using the disputed domain name in bad faith. Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. (See WIPO Overview 3.0, section 1.1.3)
It is not in dispute that the disputed domain name was registered in 1997 whereas the Complainant did not commence business until after that date and did not register WEDIA as a trademark until 2005. Moreover, the Complainant has not shown that it holds trademark rights to WEDIA in Japan nor that it carries on business in Japan such that the Respondent would have had any knowledge of the Complainant or the Complainant’s trademarks.
The Complainant has not presented any evidence to suggest that the Respondent registered the disputed domain name in bad faith. The Panel also does not consider that a notice on a website in Japanese that a business has ceased to be use in bad faith. This is merely informing customers that what appears to be a legitimate business has ceased.
The third part of paragraph 4(a) of the Policy is therefore not satisfied.
Paragraph 15(e) of the Rules provides:
“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.”
A number of panelists have held that panels have a duty to make findings of reverse domain name hijacking or bad faith if they reach a decision that the proceedings should not have been brought. (See Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603 and WIPO Overview 3.0, section 4.16)
Without evidence that the disputed domain name was registered in bad faith in 1997 (or that there had been a subsequent transfer in bad faith), the Complainant should have known that the proceedings were bound to fail. Nevertheless, the Complainant had sought to contact the Respondent prior to filing the complaint and made a reasonable offer of USD 3,000 to purchase the domain name but did not receive any reply from the Respondent. The Complainant appears to have prepared the complaint itself without taking external legal advice and does not appear to have been previously involved in UDRP proceedings. The Panel is, therefore, willing to give the Complainant the benefit of the doubt that it was not aware of the possibility of a RDNH finding. In the particular circumstances of this case, the Panel therefore determines that it is not necessary to make a declaration of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: November 8, 2018
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