Luxus Management Co. Ltd. v. Bunger, Owe / Bunger
Claim Number: FA1507001629725
Complainant is Luxus Management Co. Ltd. (“Complainant”), represented by Anna Loparco of Dentons Canada LLP, Alberta, Canada. Respondent is Bunger, Owe / Bunger (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <luxus.com>, registered with Network Solutions, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Jonathan Agmon>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2015; the Forum received payment on July 20, 2015.
On July 22, 2015, Network Solutions, Llc. confirmed by e-mail to the Forum that the <luxus.com> domain name is registered with Network Solutions, Llc. and that Respondent is the current registrant of the name. Network Solutions, Llc. has verified that Respondent is bound by the Network Solutions, Llc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@luxus.com. Also on July 22, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 10, 2015.
Additional submission was submitted by Complainant on August 14, 2015 according to Rule 7. Additional submission was also submitted by Respondent on August 19, 2015.
On July 20,2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the LUXUS trademark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA800640, filed May 18, 2010, registered June 22, 2011). Complainant also asserts unregistered common law rights in the LUXUS mark dating back to January 2007. The mark is used in connection with a variety of goods and services in the real estate and travel industry.
Complainant is also the owner of the domain names <luxusgroup.com> and <luxusdevelopment.com>.
The <luxus.com> domain name is identical to the LUXUS trademark.
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent has failed to actively use the domain name since its registration as the resolving website displays a “coming soon” message.
Respondent has engaged in bad faith registration and use. Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering to sell the domain name.
B. Respondent
Complainant only owns one registered mark in Canada. Respondent notes that all other registration attempts for the mark are still pending. Further, Respondent notes that its registration of the disputed domain name predates the date on which the LUXUS mark was first used by Complainant.
Respondent has rights or legitimate interests in the <luxus.com> domain name. For one, Respondent’s registration of the domain name predates any date on which Complainant could have had rights to the LUXUS mark. Also, the domain name is comprised of a generic term.
Respondent has not acted in bad faith. Complainant’s assertion that Respondent offered the domain for $25,000.00 is unsubstantiated and false. The domain name is comprised of a generic term, so Respondent could not have acted in bad faith.
C. Additional Submissions
Complainant additional submission claims that the disputed domain name was at least inactive for the last 11 years. Respondent has not shown any legitimate use of the domain, and has not provided any evidence of its preparations to use the domain. Complainant further argues that LUXUS it is not a commonly used word in the English language. The Canadian Intellectual Property Office would not have permitted the registration of a generic word.
Respondents additional submission claims that Respondent has always intended to make use of the Disputed Domain. Respondent intended to post art created by Respondent’s deceased wife Irene at the Disputed Domain in remembrance of her. Further, Respondent further claims that Laches bars Complainant’s claims. Respondent has been the registrant of the Disputed Domain for almost twenty years, during which time Complainant has never asserted any trademark rights against the Disputed Domain or Respondent.
Complainant is the owner of Canadian Trademark registration since June 22, 2011. Complainant also asserts unregistered common law rights in the LUXUS mark dating back to January 2007. The mark is used in connection with a variety of goods and services in the real estate and travel industry.
The disputed domain name <luxus.com> was registered on April 8, 1996. The disputed domain name is inactive.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has registered the LUXUS trademark with the CIPO (e.g., Reg. No. TMA800640, filed May 18, 2010, registered June 22, 2011). The mark is used in connection with a variety of goods and services in the real estate and travel industry. The Panel finds that registration with the CIPO is sufficient to establish rights in a trademark. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the CIPO). The Panel also notes that Complainant does not need to register its trademark in the same out of which Respondent operates. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also asserts unregistered common law rights in the LUXUS trademark. The trademark registration certificate submitted by Complainant states that the LUXUS mark has been used in Canada since at least January 2007. See Compl., at Attached Ex. A-1. To acquire common law rights in a trademark under the UDRP, Complainant must show that the mark has acquired secondary meaning. The Panel notes Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), where it was stated by the panel that relevant evidence of secondary meaning included “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Here, Complainant asserts that it has spent a significant amount of time and money advertising its goods or services under the LUXUS trademark. Complainant has also submitted newspaper articles that show the LUXUS mark being used in commerce. See Compl., at Attached Ex. D-1—D-3. The Panel believes Complainant has presented enough evidence to establish secondary meaning, and finds Complainant has common law rights under Policy ¶ 4(a)(i) dating back to January 2007.
The <luxus.com> domain name is identical to the LUXUS mark. The only difference between the domain name and the mark is the addition of the gTLD “.com.” As a general rule, the gTLD “.com” is incapable of providing any distinguish relief for Respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that the <luxus.com> domain name is identical to the LUXUS mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the LUXUS mark in domain names. The Panel notes that “Bunger, Owe” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. In the present case, such void is extensive. Where such a void exists, especially when such a void lasts for a long period of time, Respondent may not have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant claims that Respondent is failing to actively use the domain name. Complainant notes that the domain name resolves to a webpage with a message reading “This Site Is Under Construction and Coming Soon.” See Compl., at Attached Ex. F. Prior panels have declined to grant a respondent rights under Policy ¶¶ 4(c)(i) or (iii) where the domain name is not actively being used. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). This Panel is of the opinion that rights or legitimate interest can only be accumulated by a domain name holder is through active use of the domain name or other trademark rights which can be shown by clear and convincing evidence. The passive holding of a domain name for a long period of time, of itself, does not confer rights or legitimate interest to the registrant.
Therefore, the Panel finds that Respondent has failed to actively use the domain name for a sufficient time period, and therefore decline to grant Respondent rights or legitimate interest under Policy ¶¶ 4(c)(i) and (iii).
The Policy requires that Complainant prove that Respondent register and use the disputed domain name in bad faith. The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
While the Panel concludes that Respondent does not have rights or legitimate interests in the <luxus.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Complainant failed to show that the Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering the domain name for sale. However, Complainant failed to support such allegation with sufficient evidence. Since there is no evidence of a bad faith offer to sell by the named Respondent (“Bunger, Owe / Bunger”), the Panel finds that Complainant failed to show bad faith under Policy ¶ 4(b)(i). See PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the respondent did not register the domain names in bad faith where there is no evidence that the respondent intended to sell the domain names).
The Panel further finds that Respondent has not registered or used the <luxus.com> domain name in bad faith if it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)). Complainant failed to bring forth evidence showing other indications of bad faith on the part of Respondent.
The Panel notes that the Whois record shows that the disputed domain name was registered on April 8, 1996. The Panel also notes that the date of first use listed on Complainant’s CIPO trademark registration is January 2007. See Compl., at Attached Ex. A-1. Aside from non-use of the disputed doimain name, Complainant failed to show evidence indicating bad faith registration and use. Therefore, the Panel finds that without additional evidence to support indications of bad faith, the mere non-use of the disputed domain name is not sufficient for a finding that Respondent registered and used the disputed domain name in bad faith, as the registration predates Complainant’s rights in the mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the panel should examine all the circumstances of the case to determine whether the respondent is acting in bad faith.).
Further, the<luxus.com> domain name is comprised entirely of a common term that has many meaning apart from use in Complainant’s mark. “luxus” is Latin for “luxury.” Therefore, the registration and use of domain name comprising such a common term is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term, the Panel also finds that the nature of the disputed domain name is another indication that Respondent did not registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Reverse Domain Name Hijacking
UDRP Rule ¶15(e) 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".
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name. Respondent argues that this complaint was filed during a six-week German holiday in the hopes that Respondent would not receive notice that the complaint was filed. Respondent has provided a list of German holidays to help support this claim. See Response, at Attached Ex. L. Further, Respondent claims that it has always been the registered owner of the disputed domain name, dating back to 1996.
In general, the onus of proving Complainant bad faith in such cases is on the respondent and the success of the respondent is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would need to show knowledge on the part of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.
Even if a Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
While, Respondent is a German national Complainant is Canadian. There is no evidence to show that Complainant was aware and specifically filed the complaint so as to prevent Respondent from answering the complaint. The Panel finds there is no sufficient evidence to this effect, and that reverse domain name hijacking did not occur. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <luxus.com> domain name be REMAIN WITH Respondent.
Jonathan Agmon, Panelist
Dated: 31 August 2015
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