The Complainant is Industrias Tamer S.A. DE C.V. aka MIKELS, Mexico, represented by Salvador Camacho Hernández, Mexico.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”)/ Stanley Pace, United States, represented by Howard M. Neu Law Offices, United States.
The disputed domain name <mikels.com> is registered with Epik, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2021. On December 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2021, 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 sent an email to the Complainant mentioning additional registrant information received from the Registrar. On December 9, 2021, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2022. A Response was filed with the Center on January 7, 2022.
On January 14, 2022, the Complainant filed a supplemental filing to which the Center acknowledged receipt.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 17, 2022. 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 private company founded in the 1960’s with its registered seat in Mexico. It is mainly active in the development and sales of hand, mechanical, and electrical tools as well as in providing automotive, industrial and electrical equipment. It operates sales and service centers in 24 states of Mexico and in Guatemala.
The Complainant is the owner of the MIKEL’S trademark, which is registered in Mexico, Colombia, China and Panama. For instance, the Complainant is the owner of the Mexican Trademark Registration No. 527262 (registered on July 29, 1996), covering protection for hand-powered tools and instruments, cutlery, forks and spoons, as well as for knives and razors, as covered in class 8 (Annex 7 to the Complaint).
Furthermore, the Complainant owns and operates its main website at <mikels.com.mx>.
As reported by the Registrar, the initial named Respondent is a privacy service company, which is apparently operated by the Registrar itself. The underlying registrant whose counsel filed the Response to the Center on January 7, 2022, is an individual from the United States and active in the business of registering and using domain names for investment, selling or leasing purposes.
The disputed domain name has been first registered on March 20, 1998, and has been transferred to the Respondent, on either June 20, 2009 (Annex 8 to the Complaint) or April 28, 2008 (according to the Response).
Ever since, the disputed domain name resolves to a parking page, which is used in connection with pay-per-click (“PPC”) links (Annex 9 to the Complaint and Annex 2 to the Supplemental Filing of the Complainant). At least in 2019 and 2021, the disputed domain name has also been offered for sale (Annex 9 to the Complaint).
According to various email communications in the case file (Annex D to the Response), the Commercial Director at the Complainant contacted the above-mentioned individual person on August 13, 2019, and indicated that he wishes to purchase the disputed domain name. In return to an offer to purchase the disputed domain name for USD 9,000,00, the Commercial Director at the Complainant asked on December 29, 2021, for another “best price” for the disputed domain name.
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that its MIKEL’S trademark is widely known not only in Mexico and Latin America, but also in the United States, particularly through its sponsoring of the Nascar Truck Series Racing competition (Annex 6).
The Complainant is of the opinion that the disputed domain name is identical to its MIKEL’S trademark and argues that the missing apostrophe within the disputed domain name should not be considered, as it cannot be used in the disputed domain name for technical reasons.
It further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In this regard, it is particularly argued that the Complainant has no commercial relationship with the Respondent and that the Respondent has never been granted with a license or any other authorization to use the MIKEL’S trademark.
In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. It is argued that the Respondent must have been well aware of the Complainant and its MIKEL’S trademark, when acquiring the disputed domain name in 2009 (or, it would seem, in 2008 as the Respondent claims). In this regard, the Complainant believes that the Respondent is a serial cybersquatter, who is engaged in pattern of registering domain names infringing third parties’ trademark rights. The Complainant puts forward that the Respondent has been previously involved in more than 40 UDRP cases, most of which he lost (Annex 1 to the Supplemental Filing of the Complainant). In addition, the Complainant is convinced that the Respondent targets the business of the Complainant and tries to prevent the Complainant from reflecting its MIKEL’S trademark in the disputed domain name.
As regards the attempt to purchase the disputed domain name in 2019, and 2021, by the Commercial Director of the Complainant, it is argued that the attempt was not initiated or in any way endorsed by the Complainant and that this attempt was performed, without knowledge of the Complainant and its institutional channels, solely and individually by an employee of the Complainant.
The Respondent claims it acquired and controls the disputed domain name since 2008 (the Complainant alleges this is from 2009).
The Respondent requests the denial of the Complaint and a finding of Reverse Domain Name Hijacking (RDNH).
He argues to be in a legitimate business of registering domain names for the purpose of investing in, selling or leasing them. He asserts to have accumulated over 60,000 domain name registrations for these purposes, including around 10,000 family names, which he allegedly uses for email and rental businesses.
He asserts that since its acquisition in 2009, the disputed domain name is parked only with PPC links, which do not target the Complainant’s trademark or promote competitors of the Complainant. It is rather argued that “Mikels” is a common family name and that a Google search of “Mikels” with more than 46,000,000 results does not show the Complainant until page 3 (Annex 3 to the Response), which in view of the responding person indicates that, contrary to what is claimed by the Complainant, it is not the only one entitled to use the name “Mikels”.
In this regard, the Respondent asserts that he did not have any knowledge of the Complainant’s trademark rights in Mexico or elsewhere in Latin America at the time of his acquisition of the disputed domain name in 2009. It is argued that the Complainant has provided no evidence that could indicate otherwise. It is further argued that, while the Complainant has no registered trademark rights for MIKEL’S in the United States, there are various other “Mikels” trademark registrations in the United States, none of which belonging to the Complainant (Annex A to the Response).
Additionally, it is argued that the attempt of the Complainant’s Commercial Director to purchase the disputed domain name constitutes a “prime example of a Plan B acquisition”.
Furthermore, it is argued that even if the doctrine of laches may or may not apply to the present case, the fact that the Complainant did not bring his UDRP action for 13 years indicates that the disputed domain name was not purchased and has not been used in bad faith.
As regards the requested RDNH finding, it is argued that “the Complainant, represented by a counsel, knew or should have known that the Complaint would fail due to (1) not having a United States trademark [registration], (2) making an offer to purchase the domain name which was refused (Plan B), and (3) taking 13 years to file a UDRP [action] which reflects a lack of bad faith in both registration and use of the domain name.”
The Registrar identified “Anonymize, Inc.” as the registrant of the disputed domain name. For purposes of the Policy, paragraph 1 of the Rules defines the “Respondent” as the holder of a domain-name registration against which a complaint is initiated. The Complaint was filed against the Registrar-confirmed registrant of the disputed domain name, “Anonymize, Inc.”
As mentioned-above, the Center received a Response from counsel for Stanley Pace as the underlying registrant. The case record is sufficiently showing that the responding person has acquired the disputed domain name in 2009, and has controlled it ever since.
Hence, the Panel accepts the Response as filed by counsel and any reference to “the Respondent” will refer to Stanley Pace, unless otherwise indicated.
The Panel notes that the Center received a supplemental filing from the Complainant on January 14, 2022.
The Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, that it is appropriate to consider the circumstances of each case before deciding whether or not to admit additional or late-filed submissions.
In this case, the Panel decides to admit the Complainant’s additional submission to the present administrative proceeding, as it sees no reason and disadvantage for the Respondent not to take the Complainant’s supplemental filing into account, as it contains nothing that would alter the Panel’s analysis and outcome of its decision below.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
The Panel finds that the Complainant has registered trademark rights in the mark MIKEL’S by virtue of various trademark registrations e.g., in Mexico, Colombia, Panama, and China.
Furthermore, the Panel notes that the disputed domain name differs from the Complainant’s mark only by the omission of the apostrophe compared to the MIKEL’S trademark.
As stated at section 1.9 of the WIPO Overview 3.0, where the relevant trademark remains recognizable within the disputed domain name, the omission of punctuation marks or characters would generally not prevent a finding of confusing similarity. Against the background that an apostrophe could not have been used anyway for technical reasons, the Panel believes that the missing apostrophe within the disputed domain name does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MIKEL’S trademark and concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel recognizes that this burden of proof would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and section 2.1 of the WIPO Overview 3.0.
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no license or alike to use the Complainant’s MIKEL’S trademark in a confusingly similar way within the disputed domain name.
The Respondent, in return, argues a legitimate interest or even right in the disputed domain name by mainly asserting that the disputed domain name comprises a common family name in the United States and that it has been registered solely for the purpose of doing legitimate business, like selling or leasing it.
In this regard, the Panel notes that a Google search for “Mikels” revealed 46,400,000 results, which do not show the Complainant until page 3 (Annex B to the Response). A further trademark search revealed various United States trademark registrations comprising “Mikels” or “Mikel”, none of which belong to the Complainant (Annex A to the Response). These findings in the case record at least indicate that a legitimate use of the disputed domain name by the Respondent is not per se out of question.
Bearing these findings in mind, the question is whether the Complainant has successfully established that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel is of the opinion that registering domain names comprising common family names for business purposes is not per se illegitimate. Even the use of PPC links may be acceptable, depending on the circumstances the links are created and used.
According to the provided screenshots of the parking page at the disputed domain name, the used PPC links predominantly do not target the Complainant’s trademark or promote direct competitors of the Complainant in Mexico. There are, however, screenshots of January 13, 2022 (Annex 2 to the Supplemental Filing of the Complainant), showing that some of the used links refer to the Complainant and its Mexican competitors.
In light of the fact that the term “Mikels” may also be used without necessarily targeting the Complainant’s trademark, e.g., as a family name, it is in view of the Panel questionable whether these identified PPC links to the Complainant and its competitors are as such sufficient to accept a lack of rights or legitimate interests of the Respondent in the disputed domain name.
Additionally, even if the doctrine of laches may not directly apply to the UDRP, the Panel is of the opinion that the long period of inaction by the Complainant cannot remain unconsidered, particularly as the acquisition of the disputed domain name to the Respondent occurred in the year 2009 (claimed to be 2008 by the Respondent – but ultimately this matters not). In its Complaint, the Complainant was not able to provide convincing arguments for 24 years, respectively 13 years of inaction until the UDRP action was filed.
Together with the offer of the Commercial Director of the Complainant to purchase the disputed domain name from the Respondent prior to the administrative proceeding (even if this allegedly happened without authorization or endorsement of the Complainant), the Panel at least cannot exclude a possible right or legitimate interest of the Respondent in the disputed domain name.
Consequently, the Panel is rather of the opinion that the Complainant has not sufficiently demonstrated that the Respondent lacks any right or legitimate interest in the dispute domain name.
However, a definitive finding by the Panel in this respect can be omitted, as the Complaint is in view of the Panel anyhow not to be successful for the following reasons in respect of the alleged bad faith registration and use by the Respondent.
In light of the following, the Panel is not convinced that the Respondent registered and is using the disputed domain name in bad faith.
To begin with, the Panel notes the transfer of the disputed domain name from a third party to the Respondent in 2009 not as a mere renewal, but as an acquisition which date is relevant for purposes of assessing bad faith – to hold otherwise (i.e., that the initial registration date controls) could cloak a subsequent bad faith purchaser with impunity and such interpretation would defy common sense. Rather, the date on which the current registrant acquired the disputed domain name is the date, the Panel will consider for assessing bad faith registration. In the present administrative proceeding, the relevant date of acquisition of this disputed domain name by the Respondent is June 20, 2009 (Annex 8 to the Complaint).
The Panel notes that the Complainant believes its trademark to be well-known and that the Respondent had its MIKEL’S trademark in mind when acquiring the disputed domain name in 2009. Furthermore, the Complainant asserts that the Respondent is a serial cybersquatter, who was already involved in various UDRP disputes since 2006.
The Panel does not find the Complainant’s argumentation sufficiently convincing to accept bad faith registration and use.
First, it remains unclear whether the Respondent had the Complainant‘s MIKEL’S trademark in mind when acquiring and registering the disputed domain name in 2009. As shown in Annex 2 to the Response, a Google search for “Mikels” lead to more than 46,000,000 results, most of the first pages at least with no direct or indirect connection to the Complainant. In view of the Panel, this at least indicates that the Respondent, who is residing in the United States, could also have other legitimate intentions and business opportunities than the Complainant and its MIKEL’S trademark in mind when registering the disputed domain name.
Even though the Complainant is a sponsor of the famous Nascar truck races in Mexico, this does in view of the Panel not necessarily lead to the consequence that the Respondent, who is living in the United States, targeted the Complainant’s MIKEL’S trademark rights with malicious intent when registering the disputed domain name in 2009, noting also that apparently none of the Complainant’s MIKEL’S trademarks are also registered in the United States, where the Respondent seems to be located. A registrant cannot hide behind the fact that it is in a different jurisdiction than a complainant, but it would be incumbent on such complainant to show why they are being targeted.
As indicated above, the business of monetizing domain names consisting of generic terms or common family names can be legitimate and is not by itself per se a convincing indication of serial cybersquatting and bad faith.
Even if the Respondent has been involved in previous UDRP cases and lost a major part of them, the Panel finds that this does not necessarily lead to a finding that the Respondent is generally involved in pattern of mass registration of domain names targeting third parties’ trademark rights in bad faith. The Panel rather believes that at least the present case needs to be assessed individually, particularly as the Respondent has allegedly registered more than 60,000 domain names, including 10,000 comprising family names.
Bearing in mind that the Respondent has denied any knowledge of the Complainant and its MIKEL‘S trademark at the time of registration, the provided indications of the Complainant in the present administrative proceeding are not sufficient to convince the Panel that the Respondent registered the disputed domain name in 2009 in bad faith.
Also, the Panel is not sufficiently convinced that the Respondent has used the disputed domain name in bad faith. The Panel notes that some of the PPC links used in connection with the disputed domain name were related to the Complainant or other companies in the industrial tool sector (Annex 2 of the Supplemental Filing of the Complaint). However, the Panel hesitates to accept bad faith use merely on the bases of these few PPC links, whereas the further case record lacks of sufficiently strong indications of malicious intent to trade off the Complainant’s trademark rights, particularly as there are conceivable other uses of the disputed domain name, which do not target and relate to the Complainant’s trademark and business.
Consequently, as the burden of proof concerning bad faith registration and use remains with the Complainant, the Panel renders a non liquet decision finding that the Complainant has not satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
RDNH is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain name holder of a domain name.
As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).
The Respondent believes that the case at hand constitutes an attempt of a RDNH.
The Panel does not share the view of the Respondent. The Panel does not see sufficient indication to assess an attempt for RDNH and an abuse of the administrative proceeding by the Complainant. In view of the Panel, this case rather illustrates the difficulties of trying to prove bad faith, when registration of the disputed domain name lies back 13 years by the Respondent and the actual use does not go beyond PPC links. In fact, as already indicated above, the decision is rather a result of what appears to the Panel to be a non liquet case.
Consequently, the Panel is of the opinion that the present case does not qualify as an attempt of RDNH.
For the foregoing reasons, the Complaint is denied.
Date: January 31, 2022
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