The Complainant is Webshop Beheer BV, Netherlands, represented by MICTA BV, Netherlands.
The Respondent is Matt Myers, Canada, self-represented.
The disputed domain name <cookinglife.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. On September 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2019, 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, and the proceedings commenced on October 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2019. Upon request of the Respondent, the due date for Response was automatically extended to October 28, 2019, pursuant to the Rules, paragraph 5(b). The Response was filed with the Center on October 28, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 12, 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.
The Complainant is located in The Netherlands. It owns the European Union Trademark, EUTM No. 014738901 for “cookinglife” in respect of cutlery in International Class 8, coffee makers in International Class 11, and kitchen utensils, Chinaware, cooking pots and drinking glasses in International Class 21. The application for this trademark was filed on October 27, 2015 and registered on February 22, 2016.
According to the Complaint, a subsidiary of the Complainant registered the domain name <cookinglife.nl> in 2008. It has been active continuously since February 2009, resolving to a website from which cutlery, crockery, and other kitchen-ware products are offered for sale by reference to the trademark. The text of the website throughout this period is Dutch.
The disputed domain name was first registered on May 24, 2012. However, the Respondent states that he acquired the licence to the disputed domain name via a monthly purchase plan on March 24, 2017, finally “taking possession” of it on February 24, 2018.
Prior to the Respondent’s acquisition of the disputed domain name, the disputed domain name was offered for sale via HugeDomains.com, it appears for some six years. Since the Respondent acquired the licence to the domain name, it has not resolved to any website at all. The Respondent states that he made the purchase with plans to develop it as part of a network of sites he is slowly developing.
The Complainant wishes to expand its Internet presence to include a domain name ending in “.com”. It wrote to the Respondent in November 2018 offering to buy the disputed domain name. The Respondent rejected an initial offer of EUR 3,000. That rejection was followed be second communication inviting the Respondent to name his price.
The Respondent did not take up that opportunity. The Complainant then filed what it describes as an “incomplete Complaint”. That “incomplete Complaint” was not proceeded with. The Complainant then filed the present Complaint.
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.
The Complainant requests that the language of the proceeding be English, noting that both the registration agreement and the communications between the parties before the proceeding was brought are in English. Neither party has suggested that the provisions of paragraph 11 of the Rules should be departed from. The Response has also been submitted in English. Accordingly, the Panel finds that English is appropriately the language of the proceeding.
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 the EUTM for “cookinglife” identified 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 Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. 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. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Disregarding the “.com” gTLD, the disputed domain name is identical to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
In the circumstances of the present case, it is 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 that, as its domain name <cookinglife.nl> has been in use continuously since 2009, the Respondent must have known about it when he registered the disputed domain name. (The argument is equally applicable to the date the Respondent actually acquired the domain name as to the earlier date in 2012, which the Complaint addresses.) According to the Complainant, its Dutch domain name must have “popped up” when the Respondent searched for the domain name he registered.
Alternatively, the Complainant contends that bad faith should be inferred from the exact correspondence between the relevant part of the disputed domain name and both the Complainant’s registered trademark and its Dutch URL combined with the facts that the Respondent has made no use of the disputed domain name and has rejected reasonable offers to buy the disputed domain name.
The Respondent denies knowledge of the Complainant or its Dutch URL. He says he first thought of using the name “Cooking life” as a potential brand name in 2013. He has submitted a heavily redacted email from August 2013 in support of that claim. The email is so heavily redacted that the Panel cannot make much, if any, sense of it. The Respondent did not proceed with the project at that time, but was pleased to discover it was still available when he came back to the project in 2017. The Respondent further explains the lack of activity on the site in part to what he says is severe chronic pain requiring serious medical intervention and in part due to the scale of his ambitions. The Respondent has not submitted any material corroborating either his medical issues or demonstrating any concrete preparations to use the disputed domain name.
It is a possibility that the Respondent was aware of the Complainant’s trademark when he acquired the domain name. The applicable standard of proof under the Policy, however, is the balance of probabilities or requires a finding on a “preponderance of evidence”, not just possibility. See WIPO Overview 3.0, section 4.2.
Notwithstanding the lack of corroboration of some of his claims, the Respondent’s denial of knowledge of the Complainant or its trademark is not inherently implausible. In English, whatever may be the case in Dutch or any other language, the expression “cooking life” is a common or descriptive expression. The Respondent has also submitted some materials demonstrating use of the term in ordinary, everyday usage to refer to cooking activities. The Complainant’s website is very clearly directed to a Dutch-speaking audience. The Respondent is located in Canada. There is no evidence to suggest that the Complainant is conducting business in North America or has North American customers. In these circumstances, the Panel is unable to infer that the Respondent was likely to have been aware of the Complainant or its trademark when he acquired the disputed domain name.
Rejections of offers of payment in excess of purchase costs do not in themselves lead to an inference of bad faith registration. They may do so where there is a clear inference is that the rejection arose because the respondent was holding out for an even larger payment. In some circumstances, a failure to use a domain name can lead to an inference that it was registered and is being used in bad faith. That is typically in circumstances where the distinctive feature of the domain name is not descriptive or generic and has value because of its significance as someone’s trademark. On the evidence in this case, that is not an inference the Panel considers can be drawn for the reasons outlined above.
The Complainant therefore has not established that the Respondent registered the disputed domain name in bad faith and so cannot establish the third requirement under the Policy.
As the Complainant has not demonstrated that the disputed domain name was registered in bad faith, the Complaint must fail. Therefore, no good purpose would be served by considering the issues arising under the second requirement.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: November 27, 2019
Stay updated! Get new cases and decisions by daily email.