The Complainant is DIGITI limited liability company of Zandhoven, Belgium, represented by ConSenso Advocaten, Belgium.
The Respondent is Privacy Administrator, Anonymize, Inc of Bellevue, Washington, United States of America (“United States”) / Michele Dinoia, Macrosten LTD of Nicosia, Cyprus, represented by WEBLEGAL, Italy.
The disputed domain name <digiti.com> (the “Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 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 September 28, 2018 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 amendment to the Complaint on October 3, 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 the Respondent of the Complaint, and the proceedings commenced on October 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2018. The Response was filed with the Center on October 30, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 5, 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 a company incorporated in Belgium. The Panel has been provided with no information about its business other than the fact that it owns European Union trade mark number 017630955 for the word “DIGITI” registered on May 9, 2018 and it says that it uses the DIGITI trademark in in connection with the IT sector. This trademark is referred to in this decision as the “DIGITI trademark”.
The Disputed Domain Name was registered by the Respondent on April 25, 2002. According to the Complaint it has been linked to a webpage which carries pay-per-click (“PPC”) links. No copy of that page was placed in evidence. At the time of this decision it links to a webpage which carries automatically generated PPC links and indicates that the Disputed Domain Name may be for sale.
The word “digiti” is in Italian the plural of the word “digitus” meaning finger, and is also in Italian a form (second person singular) of the verb “digitare” meaning “to type”.
The Complaint is remarkably short and devoid of information. The Panel does not know when the Complainant was formed, what it does or indeed anything about it beyond its ownership of the DIGITI trademark. The points made in the Complaint are as follows.
The Complainant says the Disputed Domain Name is identical to its DIGITI trademark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It says the Disputed Domain Name resolves to a webpage containing unrelated third party hyperlinks. It says the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Applying the Policy paragraph 4(c), it says panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
The Complainant says that the Disputed Domain Name was registered in bad faith as “the previous domain name holder (before the proxy domain name holder) was Michele Dinoia, which has been subjected to UDRP proceedings in the past. Recently, after contacting Michele Danoia (sic), the domain name holder changed, and PRIVACY ADMINISTRATOR / ANONYMIZE, INC. became the registrant of the domain name. By using the domain name ‘digiti.com’, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating confusion with the complainant’s mark. The respondent has not answered to any of the requests of the Complainant to transfer the Domain Name”.
The Respondent appears to accept that the Disputed Domain Name is identical to the DIGITI trademark but points out that the Disputed Domain Name was registered more than 16 years before that trademark was registered.
The Respondent says that “digiti” is a common word in Italian with its roots in the Latin word “digitus”, which is also the origin of the word “digital”. He cites numerous UDRP decisions which he says establish that using common words which in their own right attract traffic to PPC pages establishes a legitimate interest. He also points out that none of the automatically generated links on the relevant page link to products covered by the Complainant’s DIGITI trademark.
The Respondent says that Michele Dinoia has always been the registrant of the Disputed Domain Name and the only reason for the change in details showing a proxy service as registrant is because of the application of European General Data Protection Regulation 2016/679 (the “GDPR”) which meant his details were no longer publicly displayed. He denies acting in bad faith, pointing out he registered the Disputed Domain Name more than 16 years before the Complainant registered its trademark.
The Respondent protests forcefully about the nature of the Complaint and seeks a finding of Reverse Domain Name Hijacking (“RDNH”).
As a preliminary issue the Panel notes this is a case where one of the Respondents (Privacy Administrator, Anonymize, Inc) appears to be a privacy or proxy registration service while the other Respondent (Michele Dinoia, Macrosten LTD) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel finds the Respondent to be Michele Dinoia and references to “the Respondent” are to that person. The Panel cannot tell whether changes in the publicly available registrant details were because of the GDPR but does not consider it matters. It is clear the Complainant sought to rely on Mr. Dinoia’s ownership of the Disputed Domain Name as part of its case (see above) and the Panel proceeds on this basis.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with 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.
The Complainant has established that it owns the DIGITI trademark. There is no dispute that the Disputed Domain Name is identical to this trademark. It does not matter for the purposes of this element that the Disputed Domain Name was registered before the DIGITI trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
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 further below as to bad faith issues.
It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present case. However, this list is non-exhaustive. As a general principle the Panel considers that a person is entitled to register dictionary words, acronyms and common phrases on the basis they may have intrinsic value and has a legitimate interest in so doing. That is subject to the proviso this is not done with the intent to target a specific trademark holder.
WIPO Overview 3.0 at section 2.1 addresses this issue as follows: “For example, generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”.
The Panel finds that the word “digiti” is a dictionary word in Italian (see above). In addition, and more generally, it clearly is a short word with potential relevance to the English word “digital” which is very widely used. The Panel has no difficulty in seeing that it is a potentially attractive word for a domain name and considers the above principles apply to it.
For reasons discussed in section C below and in the absence of any evidence indicating targeting of the Complainant, the Panel considers that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Panel finds it likely that the Respondent has simply registered a word he considered attractive and likely to be of value, and did so without knowledge of the Complainant or the DIGITI trademark.
Accordingly, the Panel considers that the Complainant has failed to show the Respondent lacks rights or legitimate interests.
The difficulty the Complainant faces in the present case is that the Disputed Domain Name was registered sixteen years before the Complainant registered its trademark. The Panel does not know whether or not the Complainant even existed at that date, as the Complainant has provided no information about this, but there is no evidence at all of the Complainant having any reputation or any common law rights in the term “DIGITI” at any time. The Panel sees no reason on the evidence to doubt the Respondent’s case that he registered it because it was an intrinsically attractive and valuable word for use as a domain name. There is no evidence before the Panel which would indicate that the Respondent in 2002 either knew of, or should have known of, the Complainant or any interest it had in the word “digiti”.
If the Respondent had no knowledge of the Complainant or any interest it had in the word “digiti”, he cannot have registered the Disputed Domain Name in bad faith. There is also no evidence he has used it in bad faith. All he has done is offer it for sale and link it to a PPC webpage. There is no evidence before the Panel that this page in any way relates to the Complainant or its business, or that it seeks to confuse customers of the Complainant. The Respondent has done nothing that targets or in any way relates to the Complainant or its business.
The Panel is also not persuaded by the fact that the Complainant has suggested the Respondent has been subject to previous UDRP proceedings. The Complainant has not identified these proceedings or indeed what the outcome of such proceedings was. It is not the function of the Panel to start an investigation of its own to establish the facts behind this allegation and whether it has any merit and the Panel discounts it.
Accordingly, the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a 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”.
As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by panels for finding Reverse Domain Name Hijacking include: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith…such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.”
Each of (i) (ii) and (iii) is present to at least some degree in the way in which the Complainant has conducted these proceedings and the Complaint’s lack of detail falls squarely within (viii). The Complainant seems to have assumed that because it has a registered trademark identical to the Disputed Domain Name, and the Disputed Domain Name was linked to a PPC webpage, it could file the briefest of complaints without any further supporting detail or useful information. It completely ignored the fact the Disputed Domain Name had been registered 16 years before its trademark was registered.
The Panel also notes the Complainant is legally represented. The WIPO Overview 3.0, section 4.16 explains that “[g]iven the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard”. This approach was adopted in Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012‑1555: “The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable. The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement.” Likewise, see Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709: “the Complainant, who is represented by specialist attorneys who appear to have specific expertise in this area, knew or ought to have known that this was the case”. The Panel agrees with these principles and considers that the Complaint in the form presented had no realistic prospect of success and should not have been filed.
The Panel therefore concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. In addition, the Panel concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Date: November 15, 2018
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