GVE Global Vision Inc. v. SDB Organisation Limited
Claim Number: FA1804001783819
Complainant is GVE Global Vision Inc. (“Complainant”), represented by Legal Logik Inc., Quebec, Canada. Respondent is SDB Organisation Limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalvision.com>, registered with Domain.Com, Llc.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2018; the Forum received payment on April 27, 2018.
On April 26, 2018, Domain.Com, Llc confirmed by e-mail to the Forum that the <globalvision.com> domain name is registered with Domain.Com, Llc and that Respondent is the current registrant of the name. Domain.Com, Llc has verified that Respondent is bound by the Domain.Com, 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 April 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2018 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@globalvision.com. Also on April 30, 2018, 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 May 21, 2018.
A compliant Additional Submission was received from Complainant on May 23, 2018. A compliant Additional Submission was received from Respondent on May 24, 2018.
On May 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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, GVE Global Vision Inc., uses its GLOBAL VISION mark to promote its products and services and established rights in the mark through registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA976,165, registered Jul 19, 2017).
Respondent’s <globalvision.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <globalvision.com> domain name. Respondent has never made an active use of the disputed domain name.
Respondent registered the disputed domain name in bad faith. Respondent registered the domain name in 1995, when international cybersquatting rules did not apply. Further, the WHOIS information of record lists the registrant’s email address as domains@sdborganisation.com, which indicates that Respondent has an intent to profit from the purchase and sale of domain names.
B. Respondent
Complainant’s GLOBAL VISION is made up of common, generic terms and Complainant may not maintain an exclusive monopoly on such terms.
Respondent has rights and legitimate interests in the <globalvision.com> domain name dating back to February 22, 1995, when Respondent registered the domain name. The domain name is used by an existing, active company.
In 2016, Complainant emailed Respondent and attempted to purchase the <globalvision.com> domain name and Respondent refused Complainant’s offer. In 2017, Complainant registered the GLOBAL VISION mark and filed this complaint. Complainant’s conduct amounts to reverse domain name hijacking.
C. Additional Submissions
Complainant further contends that Complainant registered its trademark for a legitimate business purposes, and the disputed domain name does not resolve to an active website, which makes it clear that the <globalvision.com> domain name is no longer in “constant use.” Also, Complainant states it did not bring the Complaint in an attempt to Reverse Domain Name Hijack as the disputed domain name does not resolve to an active website.
Respondent further contends that Globalvision is a parent company of a number of subsidiaries and has been active since its original incorporation in 1992. The domain has since 1995 been in constant use, for corporate communication, and running numerous core infrastructure internal systems. The lack of a client facing website does not negate the active and constant use of the disputed domain name. Respondent also stands by the claim that this is a blatant attempt to Reverse Hijack the disputed domain name as evidenced by Respondent commencing this proceeding, in an attempt to bully the rightful registrant by falsely exerting the recently filed Trademark as legitimate grounds for obtaining the domain.
Complainant is GVE Global Vision Inc., Quebec, Canada. Complainant is the owner of a 2017 domestic registration for its mark, GLOBAL VISION, which it uses in connection with its provision of computer software and hardware, as well as related goods and services, for use in packaging, inspection, and quality control. Complainant is also the owner of the domain name <globalvisioninc.com>, which it registered and has allegedly continuously used since 1997.
Respondent is SDB Organisation Limited, London, United Kingdom. Respondent registered the disputed domain name in 1995 and has allegedly continuously used it since that time in a variety of manners through its principal company and subsidiaries. One of Respondent’s companies is GlobalVision Inc., which it incorporated in 1992. Respondent was contacted in 2016 by Complainant regarding its desire to purchase Respondent’s <globalvision.com> domain name, but Complainant declined to sell. Complainant thereafter registered the GLOBAL VISION trademark and brought this UDRP action, requesting that Respondent’s domain name be transferred to Complainant.
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 contends it has rights in its GLOBAL VISION mark through registration with the CIPO (e.g., Reg. No. TMA976,165, registered July 19, 2017). Registration of a mark with a trademark authority, such as the CIPO, confers rights in a mark. See The Toronto-Dominion Bank v. Chris Minor, FA 1710082 (Forum Feb. 13, 2017) (“Previous [p]anels have routinely held, and this Panel holds as well, that Complainant has rights in a mark based on registration of the mark with the CIPO.”). The Panel here finds that Complainant established rights in the GLOBAL VISION mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <globalvision.com> domain name is identical or confusingly similar to Complainant’s mark, but does not argue as to why it is either identical or confusingly similar. The Panel however notes that the changes between the disputed domain name and the GLOBAL VISION mark are the removal of a space and the addition of the “.com” generic top-level-domain (“gTLD”). Similar changes to a mark have been found insufficient to defeat a test for confusing similarity pursuant to Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”). The Panel here finds that Respondent’s <globalvision.com> domain name is identical or confusingly similar to Complainant’s mark.
While Respondent argues that its registration of the <globalvision.com> domain name predates Complainant’s alleged rights in the mark, the Panel here finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Although Respondent contends that the <globalvision.com> domain name is comprised of common and generic terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel here finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant has proven this element.
The Panel recognizes that 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), 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 (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). The Complainant here has set forth the requisite prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the <globalvision.com> domain name and that Respondent is not using the <globalvision.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that Respondent failed to actively use the domain name. Nonuse of a domain name may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel notes, however, that Complainant does not provide any evidence, nor articulate any legitimate argument to support its conclusion that Respondent has not actively used the domain name. Complainant does provide an exhibit indicating that at some point Complainant unsuccessfully tried to reach a website that the disputed domain name resolved to, but a party’s mere illustration of its inability to reach a website at one particular moment in time does not indicate an opposing party’s failure to actively use the domain name.
Respondent asserts that its Globalvision Inc. is a parent company of a number of subsidiaries and has been active since original incorporation in 1992. Respondent provides evidence that the domain has been registered since 1995, and asserts that it has been in constant use, for corporate communication and running numerous core infrastructure internal systems. Use of a disputed domain name in connection with a bona fide offer or a noncommercial or otherwise fair use can evince a finding that a respondent has rights and legitimate interests in a disputed domain name. See Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery v. DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC., FA 1702547 (Forum Jan. 3, 2017) (finding for respondent when complainant failed to adequately allege respondent’s lack of rights and legitimate interests in the disputed domain name). Respondent submits screenshots of the use of the disputed domain name in connection with Respondent’s business. The Panel here finds that Respondent has rights and legitimate interests in the <globalvision.com> domain name.
Next, Respondent contends that the <globalvision.com> domain name is comprised of common and generic terms and thus cannot be deemed identical/confusingly similar to Complainant’s mark. The Panel declines to address this issue since it has already found that Respondent has rights and legitimate interests in the disputed domain name.
The Complainant has NOT proven this element.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent asserts it registered and used the <globalvision.com> domain name prior to Complainant’s registration of the GLOBAL VISION mark. Complainant does not dispute Respondent’s domain name was registered more than 20 years before it registered its mark, and prior to Complainant’s registration of its own domain name. The Panel notes that since Respondent’s registration of the <globalvision.com> domain name predates Complainant’s first claimed rights in the GLOBAL VISION mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii). See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Further, the Panel’s conclusion that Respondent has rights or legitimate interests in the <globalvision.com> domain name pursuant to Policy ¶ 4(a)(ii), provides additional support for the conclusion that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (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 Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Complainant has NOT proven this element.
Reverse Domain Name Hijacking
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 <globalvision.com> domain name, of its rights to use the disputed domain name. Respondent asserts Complainant and Respondent’s companies co-existed for 21 years without issue until 2016, when Complainant made an attempt to purchase the disputed domain name from Respondent, which Respondent refused on the grounds Respondent is an active company. Respondent asserts Complainant subsequently registered a trademark and engaged a legal team to intimidate Respondent by filing the Complaint to illegitimately gain control over the domain. The Panel here finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <globalvision.com> domain name and that Respondent registered and is using the disputed domain name in bad faith. The Panel thus concludes that reverse domain name hijacking has occurred. 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 (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”).
The Respondent has proven this claim and this Panel finds the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As the Complainant has failed to established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <globalvision.com> domain name REMAIN WITH Respondent. The Panel further finds that Complainant engaged in reverse domain name hijacking.
Darryl C. Wilson, Panelist
Dated: June 13, 2018
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