The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On July 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 3, 2019, 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 July 5, 2019, 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 10, 2019.

The Center verified that the Complaint amended 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”).

Before the commencement of the proceedings, the Respondent filed two informal communications to the Center on July 10, and July 14, 2019, respectively, requesting further information regarding the proceedings.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2019. The Response was filed with the Center on July 29, 2019.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 13, 2019. 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, AgSpace Agriculture Limited, is company based in the United Kingdom that specializes in data analytics, applications, and software development for the agriculture and food production sector.

The Complainant operates its business through its website <ag-space.com> since September 2013.

The Complainant is the holder of the following United Kingdom trademark registration:

- logo , figurative mark registered with the United Kingdom Intellectual Property Office (“UKIPO”) under No. UK00003028393 on January 31, 2014, in class 44.

Hereafter referred to as the AG SPACE – SPACE TO GROW mark.

The Disputed Domain Name <agspace.com> was registered by the Respondent on April 2, 1998. The Disputed Domain Name resolves to an online marketplace selling hardware and other products, such as spray paint cans.

On May 24, 2019, the Complainant sent an email communication to the Respondent alleging that the Respondent has been cybersquatting the Disputed Domain Name. The Complainant continued by stating that “if we do not hear from you within two weeks, I will begin the domain name dispute resolution process and will cease any other direct communication with you”. On the same day, the Respondent replied to this email communication by alerting the Complainant that he already registered the Disputed Domain Name in 1998, years before the Complainant had created the domain name under which it operates, and that he was not interested in selling the Disputed Domain Name and is not engaging in cybersquatting.

On May 28, 2019, the Complainant replied to the Respondent’s email by stating that it believes to make a strong and compelling UDRP case and that the Respondent will receive no compensation once the Disputed Domain Name is awarded to the Complainant. The Complainant ended by offering the Respondent GBP 500 to nevertheless transfer the Disputed Domain Name to the Complainant. The Complainant indicated that the Respondent had until June 7, 2019, to accept this offer. The Respondent did not reply to this email communication.

On June 8, 2019, the Complainant sent another email communication to the Respondent stating that it had prepared “a 20-page UDRP document which is ready for submission today”. The Complainant then proceeded to increase its offer for the transfer of the Disputed Domain Name to GBP 700. The Respondent was given until close of business to accept the offer or the Complainant would file the Complaint. The Respondent replied to this email communication by refuting the Complainant’s allegations of cybersquatting and by repeating that he was not interested in selling the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be identical to a trademark in which it claims rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use as the Respondent’s company was dormant, the online marketplace connected to the Disputed Domain Name was not functioning and the Respondent had allegedly made reference to the Complainant’s registered office address and website on a LinkedIn profile connected to its company. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant acknowledges that the Disputed Domain Name was registered prior to the Complainant’s company and trademark registration. However, the Complainant also claims that the Respondent has registered and uses the Disputed Domain Nameprimarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.

B. Respondent

The Respondent provides that the Disputed Domain Name was already registered in 1998, years before the Complainant’s trademark registration or even the establishment of its company. The Respondent argues that the Disputed Domain Name is a composite of its initials together with the word “space”, referring to his degree in aerospace engineering. The Respondent further claims that the Disputed Domain Name has always been used in connection to a legitimate bona fide use. According to the Respondent, the online marketplace connected to the Disputed Domain Name was coded by the Respondent and is used as a showcase for offering similar e-commerce software and applications to potential customers. The Respondent contends that the alleged dormant status of his company is irrelevant to this case and that he has always maintained a web presence through the Disputed Domain Name and has used the Disputed Domain Name in connection to a personal email address in his communications with third parties. The Respondent maintains that it is not aware of any LinkedIn page referring to the Complainant’s address or website. The Respondent underscores that he has registered and uses the Disputed Domain Name in good faith and that he has no intention of selling the Disputed Domain Name despite the repeated solicitations of the Complainant.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s AG SPACE – SPACE TO GROW mark has been registered and used in connection to its software products and services for the agriculture sector.

Although the Complainant’s trademark consists of certain design elements, the assessment of identity or confusing similarity involves comparing the Disputed Domain Name and the textual components of the Complainant’s mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Disputed Domain Name incorporates the dominant textual part of the Complainant’s AG SPACE – SPACE TO GROW trademark, namely AG SPACE, in its entirety.

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

Accordingly, the Panel finds the Disputed Domain Name to be confusingly similar to the Complainant’s AG SPACE – SPACE TO GROW mark and the Complainant has thus made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (seesection 2.1 , WIPO Overview 3.0 ).

The Complainant contends that the Disputed Domain Name has not been used by the Respondent in connection with a legitimate use as the Respondent’s company was dormant, the online marketplace connected to the Disputed Domain Name was not functioning and the Respondent had allegedly made reference to the Complainant’s registered office address and website on the LinkedIn profile connected to its company.

The Respondent maintains that the website connected to the Disputed Domain Name has been used since 1998 in connection to a legitimate use, namely as a showcase for the Respondent’s software development services with regard to electronic commerce. The Respondent furthers shows that although the website is not transactional at the moment, it was operational in 2012. Finally, the Respondent disclaims any connection to an alleged LinkedIn page referring to the Complainant.

The Panel finds that the Respondent has provided sufficient evidence demonstrating that the Respondent has used the Disputed Domain Name in connection to a legitimate business activity conducted under the name AG Space Limited since 1998, more than 14 years before the Complainant started its business or applied for its trademark. The Respondent has clearly made investment and development efforts to design and operate a website used for the bona fide offering of goods and services, namely software and website development, which are unrelated to the Complainant. Additionally, the Panel is of the opinion that the Complainant does not provide any evidence showing that the Respondent has used the Disputed Domain Name to target the Complainant or to take advantage of any potential confusion with the Complainant and its mark. The Complainant does not demonstrate that there is any connection between the Complainant’s mark and the corresponding website content (see section 2.5.2, WIPO Overview 3.0). The Panel is also of the opinion that the Complainant has not sufficiently shown that the Respondent has actively referred to the Complainant’s website and postal address on the LinkedIn page connected to the Respondent’s business. The AG Space Limited LinkedIn page expressly states: “This listing was automatically created by LinkedIn. This listing is not currently maintained by, endorsed by or affiliated with AG Space Limited.”

In the present case, the Panel does not consider the potential “dormant” status of the Respondent’s company to be relevant as an indication that the Respondent is not commonly known by the Disputed Domain Name. To the contrary, the Respondent’s maintained registration in a commercial register under the name “AG Space Limited” effectively shows that the Respondent has been commonly known by the Disputed Domain Name.

Having no other elements showing the lack of legitimate interests in the Disputed Domain Name, the Panel finds that the Complainant has failed to show the Respondent’s absence of rights or legitimate interest.

C. Registered and Used in Bad Faith

Given the Panel’s finding on the issue of identical and confusing similarity and rights or legitimate interests above, it is unnecessary to consider the issue of bad faith registration or use as all three requirements of paragraph 4(a) of the Policy must be met for a complainant to prevail.

The Panel has nevertheless examined the issue and considers that the Complaint also fails on the third requirement under the Policy. To meet this requirement, a complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, the Complainant expressly acknowledges in its Complaint that “the Disputed Domain Name was registered prior to the registration of AgSpace Agriculture limited”. The Complainant further provides “our case is based principally on the fact that the Respondent has no bona fide or legitimate use of the domain name of our trademark and has refused to release the domain or respond to our offer to meet the respondent’s reasonable out-of-pocket costs related to the domain”.

As determined under the second element of the Policy, the Panel finds that the Respondent has indeed made a bona fide and legitimate use of the Disputed Domain Name. The Complainant provides no further evidence to support its allegations that the Respondent has registered and used the Disputed Domain Name in bad faith. Since the Respondent registered the Disputed Domain Name more than 14 years before the Complainant’s application for the AG SPACE – SPACE TO GROW mark and the establishment of the Complainant’s business, the Respondent could not be aware of the Complainant’s then non-existent rights. Also, since the Respondent refused every offer made by the Complainant to buy the Disputed Domain Name without making any counter proposal, the Complainant cannot reasonably argue that the Respondent registered the Disputed Domain Nameprimarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.

The Respondent has demonstrated the bona fide registration and use of the Disputed Domain Name without any consideration on the Complainant's trademark or line of business activities. Accordingly, this Panel finds that the Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith.

D. Reverse Domain Name Hijacking

The Respondent has not formally requested a finding that the Complainant has engaged in Reverse Domain Name Hijacking ("RDNH"). However, following some early cases to the contrary, UDRP panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH (see section 4.16, WIPO Overview 3.0).

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 RDNH 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”.

For this purpose, 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”.

Under paragraph 15(e) of the Rules, therefore, the Panel has a duty to consider and, if appropriate, make a ruling on whether the Complaint constitutes an abuse of the administrative proceeding.

The mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. In the present case, however, the Complainant knew it could not succeed as to the second and third element of the Policy as the Complainant had clear knowledge of the Respondent’s commercial identity corresponding to the Disputed Domain Name and the lack of bad faith by the Respondent. The Complainant expressly acknowledged that it knew that the Respondent had registered the Disputed Domain Name well before the Complainant had established its business or acquired its trademark rights. As a result, 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. The website connected to the Disputed Domain Name has also never made reference to, let alone target, the Complainant or its mark and there are no indicia that would demonstrate that the Respondent intended to disrupt the Complainant’s business or create confusion with the Complainant’s trademark for commercial gain (see section 4.16, WIPO Overview 3.0).

In these circumstances, the Panel finds that the Complaint has been brought in bad faith. Accordingly, the Panel finds that the Complainant has abused the administrative proceeding and engaged in reverse domain name hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Flip Jan Claude Petillion
Sole Panelist
Date: August 27, 2019