The Complainant is ELCOMAN Srl, Italy, represented by Andrea Colombo, Italy.
The Respondent is Marc Ellis, United Kingdom, self-represented.
The disputed domain name <kobra.com> (the Domain Name) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2020. On June 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 23, 3030, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2020, 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 June 29, 2020.
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 July 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2020. The Response was filed with the Center on July 25, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 26, 2020. 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 an Italian limited liability company headquartered near Milano, Italy. Since 1985, the Complainant has been producing and selling machines that shred and trim paper documents and data in all other media (electronic, magnetic, and optical), claiming to be a world leader in the manufacture of such devices. The Complainant advertises and sells its products in more than 90 countries through authorized dealers, agents, distributors, wholesalers, and retailers. Its website at “www.elcoman.it” is presented in versions for Brazil, Canada, Italy, Poland, the United Kingdom and the United States of America (“United States”) and, with links to Facebook, Instagram, LinkedIn, and YouTube social media pages. It appears that a distributor in the United States operates a website at “www.kobrashredders.com.”
The Complainant holds the following registered trademarks for a figurative mark comprised of an image of a cobra’s head embedded in the letter “o” of the word “Kobra” (spelled with an initial “k” rather than the dictionary “c” that is common in Italian, English, French, Spanish, German, and other European languages):
December 24, 1996
September 1, 2004
July 17, 2007
March 27, 2015
June 30, 2015
The Registrar reports that the Domain Name was created on December 1, 1999, and is currently registered to the Respondent, an individual who did not provide an organization name or postal address.
The Response attaches screenshots from the Internet Archive’s Wayback Machine supporting the Respondent’s statements that the Respondent operated a financial market data website associated with the Domain Name (the “Respondent’s former website”) called “maketdata:world”, which was active until late 2014 (when a September 2014 screenshot shows that the hosting arrangement had expired). The Response attaches a September 2002 screenshot from the Wayback Machine displaying a digital business card for the Respondent Mr. Ellis, describing him as a “Real Time Technologist” in New York and London, using the Domain Name for an email address. By contrast, a July 1, 2001, screenshot shows an “under construction” landing page, announcing (in German), “This website is dedicated to my love of snakes. It will be released soon; it is currently under construction.” Thus, while the Response claims that the Respondent’s former website was “live from 1999”, it appears that it may not have launched until sometime later. But the Panel finds that from at least July 2002 through June 2014, based on the Wayback Machine screenshots, the Domain Name was used to publish the Respondent’s blog or business details.
At the time of this Decision, the Domain Name does not resolve to an active website.
The Complainant communicated offers through two different domain name brokers in 2020 attempting to purchase the Domain Name, first for EUR 1000 and then for USD 4000. The second broker replied that the Respondent was willing to sell the Domain Name for USD 80,000.
The Complainant asserts that the Domain Name is identical or confusingly similar to its KOBRA mark and that the Respondent is not an authorized dealer or a person who otherwise has a legitimate interest in the mark.
The Complainant argues that the mark was in use “long before” the Domain Name was registered and that it is probable that “the Respondent registered the disputed domain name to prevent ELCOMAN from reflecting its trademark in a corresponding domain name.” The Complainant cites as evidence of bad faith the Respondent’s “passive holding” of the Domain Name while attempting to sell it to the Complainant for USD 80,000, contending that these facts demonstrate that the Respondent intended to deprive the Complainant of a domain name corresponding to its mark and to sell the Domain Name for a price in excess of its registration costs.
The Respondent, who is not represented by counsel, challenges the exclusivity of the Complainant’s mark, contends that the Respondent has legitimate interests in the Domain Name as a “generic” term, and denies bad faith in registering and using the Domain Name.
The Respondent observes that other parties use the name “Kobra”, many of them as a trademark, and contends the term is generic. The Respondent denies hearing of the Complainant until this dispute. The Respondent points out that a third party holds the domain name <kobra.it> in the Complainant’s home market, Italy, and that the Complainant does not appear in the first several pages of Google search results for “kobra”.
The Response attaches evidence that Reuters used the name “Kobra” for market trading software, in the business in which the Respondent is active. “The name ‘Kobra’ was chosen as it represented a popular financial desktop product used in the financial markets business called ‘Kobra’ […] Although this product is no longer developed it is still a term widely used in this industry.” According to the Response, the Respondent purchased the domain name in 1999 to host a blog covering the ‘financial real time market data’ industry. The Respondent has worked in the ‘financial real time market data’ industry since 1997 and continues to do so to this day and has never had any business dealings in the industry related to the Complainant.” The Respondent emphasizes that the Respondent’s former website never hosted any content related to the Complainant.
Although the Respondent is not currently using the Domain Name for an active website, the Respondent states that it plans to do so in the future and mentioned that fact in responding to the domain brokers’ unsolicited communications regarding offers to purchase the Domain Name. The Respondent does not recognize some of the persons and correspondence, in Italian, related to purported negotiations to purchase the Domain Name, and the Respondent denies asking for the sum of USD 80,000, which appears only in correspondence between a broker and the Complainant. The Respondent states that it has never advertised the Domain Name for sale and denies any intent to misdirect Internet users or deprive the Complainant of a domain name corresponding to its trademark.
The Respondent requests a finding of reverse domain name hijacking.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a 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 first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name incorporates the textual element of the Complainants’ registered KOBRA mark in its entirety. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. Id., section 1.11.2 and WIPO Overview 3.0, section 1.11.
The Panel concludes, therefore, that the first element of the Complaint has been established.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated its trademark rights and a lack of permission for the Respondent to use the Complainant’s mark in the Domain Name.
The Respondent does not claim trademark rights or noncommercial fair use. Rather, the Respondent asserts an interest in the Domain Name for its “generic” value in referring to market trading and the Kobra client software formerly used on the Reuters 3000 Xtra electronic trading platform, which, according to the Wikipedia article attached to the Response, was “the de facto platform on traders’ desks in banks and financial institutions” from 1999 through the early 2000s (it was not supported after 2013). The record includes evidence, which is supported by additional screenshots available from the Internet Archive’s Wayback Machine, that the Domain Name resolved for several years to a sporadically updated blog with market information that could be of interest to day traders, although it is not clear how this was connected to any “offering” of the Respondent’s “goods or services”. The Respondent has not furnished details about “demonstrable preparations” to use the Domain Name in connection with any other commercial offering in the future. See WIPO Overview 3.0, section 2.2. This past use of the Domain Name related to the meaning ascribed to “Kobra” by day traders in stocks and other securities evidently ended in 2014; the Respondent has not made such use of the Domain Name since then and does not demonstrate plans to do so in the future. The Panel follows the consensus view that the Respondent’s rights or legitimate interests must be present ones which can be established at the time of the proceeding. See WIPO Overview 3.0, section 2.11. (The Respondent’s earlier use of the Domain Name can, of course, be relevant to the assessment of bad faith in considering the third Policy element.) Thus, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case for purposes of the Policy, paragraph 4(a)(ii).
The Complainant concludes that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant has difficulty meeting its burden of establishing bad faith in both the registration and use of the Domain Name, and this is hardly surprising in a proceeding where the Domain Name was registered nearly 21 years ago, in December 1999. The Respondent claims that he had the Domain Name from the beginning, but unless he was the one who posted an “under construction” landing page about his love of snakes, in German, it is more likely that the Respondent acquired the Domain Name in 2002, when it resolved to a landing page displaying the Respondent’s digital business card. Although the Complainant had been in business since 1985, the record before the Panel does not show that its KOBRA mark was well known in 1999 or 2002. The Complainant obtained its first trademark registration, in Italy, in 1996. There is no historical evidence of advertising or sales under the mark, however, and this undercuts the Complainant’s inference that an individual in the United Kingdom must have had the trademark of industrial paper shredders in contemplation when acquiring the Domain Name.
The Respondent’s subsequent conduct also does not show clear evidence of bad faith. While the Panel does question the claim to a “dictionary” or “generic” meaning of the corresponding term, the Domain Name was not used to imitate, attack, or compete with the Complainant, or to post advertising of competitors. There is no evidence that the Domain Name was offered for sale or that the Respondent solicited offers over the many years that the Respondent has held the Domain Name. Contrary to the Complainant’s assertions, the Respondent has made some use of the Domain Name during many of those years. This does not comport with an inference that nearly two decades ago the Respondent acquired the Domain Name to deprive the Complainant of a domain name corresponding to its mark and then quietly waited for an eventual offer to purchase it. The Respondent denies such intent, and there is no evidence to rebut this.
The Panel concludes that the Complaint fails on the third element.
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”. The Respondent has requested such a finding here.
It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding of RDNH. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in WIPO Overview 3.0, section 4.16. The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, observed that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration for the assessment regarding RDNH. The Panel believes this this is such a case.
The Complainant here did not properly investigate the facts, alleging that the Respondent “has merely passively held the Domain Name,” when a simple visit to the Internet Archive’s Wayback Machine would have revealed years of use for at least a minimal blog site on topics relevant to the meaning of the name to a relevant audience, which would make it very difficult to establish bad faith. The Complainant is represented by legal counsel, but the Complaint is devoid of legal citations and shows no awareness of relevant resources, such as the WIPO Overview 3.0. The Complaint deals with a Domain Name registered roughly 20 years ago but does not satisfactorily address the obvious need to establish the likelihood that the Respondent was aware of the trademark at the time of the Domain Name registration, or the improbability that the Domain Name was acquired “primarily for the purpose of selling” it to the Complainant, given that the Respondent made no motion to do so for decades. The Complainant argues summarily that the Respondent’s bad faith in registration can be inferred because the Respondent (or at least the broker) demanded a high price when the Complainant recently decided, in its own words, to purchase the Domain Name “on a very urgent basis”. Refusal to sell is not necessarily bad faith, and the UDRP is not designed to assess claims geared to putting a dormant domain name to use.
The Panel finds that the Complaint represents an instance of attempted Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: September 7, 2020
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