Mr. Itay Hasid and Mr. Daniel Assis v. Asha Hussein
Case No. D2015-1026
1. The Parties
The Complainants are Mr. Itay Hasid and Mr. Daniel Assis of Israel, represented by Drori-Werzansky-Orland, Israel.
The Respondent is Asha Hussein of United Kingdom of Great Britain and Northern Ireland (“UK”).
The disputed domain name (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 18, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2015.
The Center appointed John Swinson as the sole panelist in this matter on July 15, 2015. 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.
On July 22, 2015, the Complainant and the Respondent submitted several supplemental communications which were forwarded to the Panel for consideration. Upon reviewing the communications, the Panel considers that they do not add any material facts or otherwise impact the Panel’s assessment.
The Complainants are Mr. Hasid and Mr. Assis, who are founding partners of a company named Batterfly Energy, Inc., registered in Israel. The Complainants are the creators, manufacturers and owners of a product named “Mobeego”, which is a single-use charging product which allows cell phone users to charge their smartphones on the go.
The Complainants have applied for a word mark for MOBEEGO, as well as a device mark which incorporates that term (the “Trade Mark”). These applications were filed in Israel on March 29, 2015. The Complainants have also filed an application for international trade mark registration through the Madrid Protocol.
The Respondent is Asha Hussein, an individual of the UK. The Respondent appears to operate a business named “Handset Factory”. The Respondent did not file a response to the Complaint, so the Panel has little further information about him.
The Disputed Domain Name was registered on April 2, 2015. The website at the Disputed Domain Name currently resolves to a parking page provided by the Registrar which at one time featured pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainants’ contentions are as follows.
Prior relationship with the Respondent
The Complainants submit that the Respondent first contacted them on March 3, 2015, after seeing a notice they had posted in an online forum regarding their product. The Respondent offered to distribute the Complainants’ product in the UK.
However, the Complainants were subsequently informed by other potential distributors that the Respondent had been holding himself out as the owner of the product and the Complainants’ business partner, and as being authorized to negotiate distribution rights on behalf of the Complainants.
Identical or Confusingly Similar
The Complainants submit that they have been using the Trade Mark since March 2015. They have conducted extensive advertising, marketing and promotion using the Trade Mark, and their goods and services prominently display the Trade Mark. The Trade Mark is unique to the Complainants, and has no recognized meaning in relation to cell phone charging except as designating the Complainants and their company as the source of the goods and services.
The Complainants submit that on March 12, 2015, the Respondent signed a mutual non-disclosure agreement at the Complainants’ request, and at that time, the Respondent was aware of the Trade Mark and of the Complainants’ intention to register the Disputed Domain Name.
The Complainants submit that the Disputed Domain Name is identical to the Trade Mark and is likely to cause confusion, mistake or deception within the public eye, as well as cause the public to believe the Respondent is acting on behalf of the Complainants.
Rights or Legitimate Interests
The Complainants submit that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Complainants have not granted permission to the Respondent to use their Trade Mark.
The Complainants submit that the Respondent cannot meet any of the situations enumerated in paragraph 4(c) of the Policy:
- The Respondent’s use of the Disputed Domain Name has no “connection with a bona fide offering of goods or services”. The Respondent has not been given authority to speak or act on behalf of the Complainants.
- The Respondent has not been commonly known by the Disputed Domain Name. The Disputed Domain Name is identical to the Complainants’ product and company, and is therefore used to confuse the public. The Respondent has not received any license to use the Trade Mark. The sole communication between the Complainants and the Respondent was for the purpose of examining the Respondent’s suitability as the Complainants’ UK distributor.
- The Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain. The Respondent is currently in the process of designing a website for the Disputed Domain Name, with the intention of distributing the Complainants’ product or other products under the Trade Mark without receiving authority from the Complainants to do so.
Registration and Use in Bad Faith
The Complainants submit that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. The parties intended to enter into an exclusive distribution agreement, which would have given the Respondent the right to exclusively distribute the Complainants’ product within the UK. However, instead of moving forward with this agreement, the Respondent purchased the Disputed Domain Name to trade off the Complainants’ goodwill. The Respondent has therefore created a likelihood of confusion as to the source of the Respondent’s website.
Further, the Complainants submit that the Disputed Domain Name was acquired primarily for the purpose of selling the Disputed Domain Name to the Complainants, as the Respondent approached the Complainants with an offer to sell the Disputed Domain Name for USD 20,000, which is in excess of the Respondent’s out of pocket expenses (being USD 150).
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 onus of proving these elements remains on the Complainants even though the Respondent has not filed a response.
The Complaint is filed jointly by Mr. Hasid and Mr. Assis. The Complainants are business partners, and have applied for the Trade Mark in both of their names. Therefore, if the Complaint is successful, each of the Complainants would be entitled to have the Disputed Domain Name transferred to him. However, only one of the Complainants can be listed as the registrant of the Disputed Domain Name. In these circumstances, it is appropriate that the Complainants decide which of them should receive the transfer. The panel in “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox, WIPO Case No. D2011-1142, stated:
“Where the complainants have specified in the complaint to which of them transfer of the disputed domain name is requested, the panel should make the order accordingly (an approach that was adopted in, inter alia, Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants), WIPO Case No. D2000-0227). Where the complainants have not specified this in the complaint, it should generally be left to them to inform the registrar of their wishes (this being the approach adopted in, inter alia, Zee Telefilms Ltd. and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com, WIPO Case No. Case No. D2001-0624; and Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html, WIPO Case No. D2001-1501).”
As the Complainants appear to have equal rights to the Trade Mark, and have not specified to which Complainant any transfer should be made, in the event that the Complaint is successful, the Panel will make an order that the Disputed Domain Name be transferred to one of the Complainants, and that the Complainants should advise the Registrar which of them is to receive the transfer of the Disputed Domain Name.
A respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel has verified that the Complainants have applied for the Trade Mark. However, the Trade Mark is not yet registered. As such, the Complainants must establish common law or unregistered trade mark rights in the Trade Mark.
In order to successfully assert common law or unregistered trade mark rights the Complainants must show that the Trade Mark has become a distinctive identifier associated with the Complainants or their goods or services (i.e., that the Trade Mark has acquired a “secondary meaning”).
The Complainants have provided credible evidence of their use of the Trade Mark in their efforts to market their product. Although the Complainants first used the Trade Mark only four months ago, the Panel considers that the Complainants have acquired common law rights in the Trade Mark on the basis of the record before the Panel.
The Complainants succeed on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name displays a Registrar parking page with PPC websites featuring links to goods and services. The Complainants have not authorized any use by the Respondent of the Trade Mark or the Disputed Domain Name. In the circumstances, such use is not bona fide.
- The Respondent has not been commonly known by the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent has made several offers to sell the Disputed Domain Name to the Complainants, all of which were greater than the likely out-of-pocket expenses directly related to the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainants has not been rebutted and the Complainants succeed on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainants first engaged with the Respondent on March 6, 2015, after he represented himself as a “huge UK distributor” who was interested in distributing their product. Through this and subsequent interactions (of which the Complainants have provided evidence), the Respondent knew of the Complainants and their product which was marketed under the Trade Mark at the time the Respondent registered the Disputed Domain Name on April 2, 2015.
The Panel considers it is likely the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, which is an indicator of bad faith under paragraph 4(b)(iii) of the Policy.
Further, the Complainants have provided evidence of an exchange with the Respondent via Skype, during which the Respondent stated: “If you want mobeego.com back, you will have to pay $20,000. If not goodbye. My business analysis (sic) said this domain will be very valuable in the next couple of years.” He later offered to sell the Disputed Domain Name for USD 7,000.
Out-of-pocket costs include the costs of obtaining, registering, and maintaining a domain name. This issue of “excessive” out-of-pocket costs is considered on a case-by-case basis. In the Panel’s experience, USD 20,000, or even USD 7,000, would greatly exceed the Respondent’s out-of-pocket costs for the Disputed Domain Name. In fact, the Complainants have provided evidence of a statement by the Respondent that he purchased the Disputed Domain Name for USD 150. This is a further indicator of bad faith under paragraph 4(b)(i) of the Policy.
The Panel concludes that the Respondent has taken advantage of a start-up business seeking distributors for its product. The Panel considers that the Respondent has registered and used the Disputed Domain Name in bad faith.
The Complainants succeed on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be transferred to at least one of the Complainants. The choice of which Complainant should be submitted directly by the Complainants to the Registrar.
Date: July 23, 2015