WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Youi Pty Ltd. v. Xedoc Holding SA
Case No. D2012-1329
1. The Parties
The Complainant is Youi Pty Ltd. of Queensland, Australia, represented by Melbourne IT Digital Brand Services, Australia.
The Respondent is Xedoc Holding SA of Luxembourg, represented by Law.es, Spain.
2. The Domain Name and Registrar
The disputed domain name <youi.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On the same day, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On July 1, 2012, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 3, 2012, 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 July 6, 2012.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 6, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 26, 2012. The Response was filed with the Center on July 27, 2012, 12:02:52 PM Geneva time by the Respondent’s representative, who stated that, due to a computer failure, he was unable to properly submit annexes or to number them properly in the Response, that he would submit a corrected copy of the Response and Annexes, and who requested that the Word Response with his signature should not be circulated. On July 30, 2012, the Center sent a communication to the parties requesting the Respondent to send through a Response in a format that could be circulated to the Complainant no later than July 30, 2012. The Response was submitted by the Respondent on July 31, 2012.
The Center appointed Brigitte Joppich, John Swinson and Diane Cabell as panelists in this matter on August 22, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is based in Australia and provides consumers with home building, contents and car insurance products. The Complainant’s business, a general insurance company, was first registered in January 2007, while its services were officially launched in early 2008.
The Complainant is registered owner of the Australian trademark registration no. 1202048 YOUI, applied for on October 2, 2007 and registered in May 12, 2008 (hereinafter referred to as the YOUI Mark). The trademark is registered in classes 36, 37 and 42 and covers, inter alia, insurance services. The Complainant is also the owner of more than 25 domain names containing the YOUI Mark or variations thereof, inter alia <youi.com.au> and <youilife.com.au>.
The disputed domain name was acquired by the Respondent in January 2009 and has been used in connection with parking websites, temporarily including websites showing insurance ads.
The Complainant first contacted the Respondent by email on July 14, 2011. The Respondent’s representative replied on July 15, 2011, enquiring about details of the trademarks referred to by the Complainant. As multiple follow-ups from the Complainant did not lead to a response on the merits from the Respondent or its representative, the Complainant’s representative sent a cease and desist letter on April 30, 2012. According to the Complainant, there still was no response. However, the Respondent claims a response was sent to the Complainant on October 26, 2011.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant contends that the disputed domain name is identical to the YOUI Mark (which has developed into a well know mark in Australia), as it consists of the word “YOUI” and the top level domain “.com”, which does not have any impact on the overall impression of the dominant part of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as it has not registered any trademarks or trade names corresponding to the disputed domain name, as it has not been using YOUI in any other way that would confer any rights or legitimate interests in the name to the Respondent, as there is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization under which the Respondent could own or use the disputed domain name, as the disputed domain name is not used, and has not been used, by the Respondent in connection with a bona fide offering of goods or services, as the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, without intent to commercial gain but, on the contrary, has used the disputed domain name to lead to a pay-per-click website with, amongst others, links to commercial websites offering services competing with those of the Complainant.
(3) With regards to bad faith, the Complainant contends that, at the time of the Respondent’s acquisition of the disputed domain name, the Complainant’s trademark had been well registered and that the Complainant had already established a large online presence and name under the brand YOUI, for which it was awarded and recognized in 2009. The Complainant further contends that multiple UDRP cases have been decided regarding domain names registered by the Respondent in violation of third parties’ intellectual property rights, and that, as a result, the pay-per-click activity of the Respondent must be considered as being based on the selection of domain names similar to third parties’ rights to a significant extent. The Complainant states that the YOUI Mark is distinctive and not generic, and that, as a result, it is most likely that the Respondent was aware of the YOUI brand at the time of registration of the disputed domain name and sought to take advantage of the Complainant’ trademark rights. The Complainant further argues that the Respondent’s failure to respond to a cease and desist letter, or a similar attempt at contact, is to be considered as relevant in a finding of bad faith, that the manner in which the privacy registration service was used by the Respondent constitutes another argument in favor of bad faith, and that the disputed domain name previously displayed pay-per-click advertising for insurance policies, the field of activity of the Complainant, which leads to bad faith use on the part of the Respondent.
First of all, the Respondent criticizes that the Complainant amended its Complaint after receipt of the disclosed registrant and contact information. In this regard, the Respondent states that the Complainant originally submitted a Complaint which contained virtually no allegations concerning legitimate interests or bad faith, and that the Complainant then submitted an amendment to the Complaint to include specific allegations, which were not contained in or referenced to in the original Complaint. The Respondent argues that the applicable rules allow for an amendment of a complaint to correct deficiencies noted by the Center’s administrators but do not open the door to amending the entirety of the complaint by adding factual or other matters to the body of a complaint. The Respondent further argues that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, reflects that, where a privacy service is in use by the domain holder, the Center will allow an amendment to correct the deficiency in naming the correct respondent once disclosed by the registrar, and that such paragraph speaks of correcting the identification of the respondent but does not permit an amendment to add factual allegations.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:
(1) With regard to the Complainant’s trademark rights, the Respondent states that the Complainant bases its entire claim upon its registered trademark and that no allegation or factual information has been provided in support of prior unregistered or common law trademark rights. The Respondent states that the Complainant’s trademark was registered on June 20, 2008, that the Respondent acquired the disputed domain name in January 2009 from the previous owner, a Korean company, and that the disputed domain name has been continuously registered since 1998 and is generic, as it corresponds to “Youi”, a region of North Chungcheong in South Korea and means “preparation; readiness; arrangements” in Japanese. Furthermore, the Respondent states that the disputed domain name was registered because it was a four character domain name and that search results revealed its popularity without any reference to the Complainant.
The Respondent denies that the Complainant was well known in 2009, when the disputed domain name was acquired, and states that the Complainant started as a small company, unknown to the public. The Respondent emphasizes that the Complainant itself stated that it began to be recognized in Australia only after about a year of active trading.
(2) Furthermore, the Respondent states that the Complainant has not established a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name, as the original Complaint contained no allegations pertaining to rights or legitimate interests and as the Complainant’s allegations in its amendment to the Complaint were inadmissible.
The Respondent further states that the Complainant’s argument that the Respondent lacks rights or legitimate interests in the disputed domain name does not count because of the fact that insurance related links appeared on the website at the disputed domain name for a certain period of time. In this regard, the Respondent argues that at all times prior to July 2010, the disputed domain name had no relationship whatsoever to insurance activities (in fact, from 1998 through July 2010, the disputed domain name was allegedly used without leading to any conflicts), that the Respondent acquired the disputed domain name in January 2009 and continued the above use, and that the Respondent – once informed that insurance related links showed up on the website - immediately took the disputed domain name offline. To sum up, the Respondent claims that its behavior establishes a legitimate interest in the disputed domain name, and argues that, if it had desired to act without any legitimate interest, it would have retained the present settings and coat-tailed on the Complainant’s new-found popularity.
The Respondent states that its rights or legitimate interests also result from the fact that there are apparently no more four letter second level domain names available under the “.com” extension and that this alone makes them valuable, that the disputed domain name is not a coined phrase but exists in at least three languages as a defined term, and that it has continuously been registered since 1998 and used in a non-conflicting manner.
Finally, the Respondent states that the use of the disputed domain name was and remains a fair use under the Policy, as the Respondent invests in high value domain names.
(3) With regard to bad faith, the Respondent denies knowledge of the Complainant or its asserted trademark and states that it was ignorant of the Complainant until receipt of the Complainant’s claim.
It further argues that the disputed domain name is not a coined phrase, that the first registration of the disputed domain name occurred in 1998, more than 10 years before Complainant even existed, that such use has been varied and that the Respondent continued such use after the acquisition of the disputed domain name, that the Respondent complied and simply took the disputed domain name offline when problems became known, that the value of the disputed domain name is due to the fact that it consists of four letters only, does not have a “trademark history”, and that its value is not determined by deriving cheap pay-per-click revenue at the expense of a known trademark holder.
The Respondent finally states that it did not register the disputed domain name to sell it to the Complainant or its competitors or to preclude the Complainant from reflecting its asserted marks in a domain name, that it did not register the disputed domain name primarily for the purpose of disrupting the business of the Complainant, that it did not register the disputed domain name to attract users by creating a likelihood of confusion, and that the use of privacy services is not considered as bad faith use.
6. Discussion and Findings
First of all, the Panel has to address the question whether the Response is to be taken into account as it was repeatedly not filed within the deadlines set by the Center. Where a response is submitted late, paragraph 14(a) of the Rules requires a panel to proceed to its decision based on the complaint only unless “exceptional circumstances” exist. Also relevant are paragraph 10(b) of the Rules, which requires a panel to treat the parties fairly and equally, and paragraph 10(c) and (d) of the Rules, which allows a panel to extend time periods and to determine inter alia the admissibility, relevance, weight of the evidence. In this case, the first Response was only a couple of minutes and the second Response only one day late and was received by the Center before the appointment of the Panel. Furthermore, the Respondent’s representative apologized for the delays stating he had computer problems. The Panel will take the Response into consideration because the present proceedings will not be affected by the Respondent’s minor delays in filing the Response.
The second issue to be dealt with is the question whether the amendments to the Complaint filed after receipt of the disclosed registrant and contact information are admissible. Paragraph 4.9 of the WIPO Overview 2.0, as cited by the Respondent, mainly contains guidance on the question of who is the proper respondent in a case involving a privacy or proxy registration service. Within paragraph 4.9, the relevant clause reads as follows:
“WIPO panels have recognized on the issue more generally, pending any uniform instructions from ICANN on the issue, that where a disclosure of an "underlying registrant" occurs, the following is appropriate:
(a) the WIPO Center makes the (typically registrar-disclosed) "underlying registrant" information available to the complainant, and provides the complainant with an opportunity to amend the complaint to reflect that information should the complainant so choose;”
Such wording does not, in the Panel’s view, prevent the Complainant from adding additional legal arguments or facts with regard to the disclosed registrant; indeed reflection of such newly disclosed information very naturally implies scope for such amendment, as the addition of a further party with no consequent permitted scope for amendment to the Complaint pleadings concerning that newly identified party would make little sense. Moreover, the Panel notes that the Center’s notification to the parties of this Registrar-identified entity expressly contemplated such possibility where it noted “We note also that any such amendment may have consequences for mutual jurisdiction and communications, and that the corresponding mutual jurisdiction and communications paragraphs of the Complaint may need to be addressed in any such amendment to the Complaint. You may also consider amending the facts and arguments in the Complaint in light of the above.” Such interpretation is also supported by aspects of procedural economy. If amendments with regard to the facts or legal arguments of a certain case would be inadmissible before formal commencement of the proceedings, a thoughtful complainant would have to think about withdrawing its original complaint and filing a new one against the underlying registrant in order to avoid being precluded with additional statements of facts or further legal arguments, which would only result in a delay of the proceeding and cause additional costs and inconveniences to those involved.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s YOUI Mark and is identical to such mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the light of the Panel’s finding below (cf. 6.C.) it is not necessary for the Panel to come to a decision in this regard.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
With regards to the bad faith registration element, having carefully considered the facts contained in the case file, the majority of the Panel finds that the Complainant has not provided sufficient evidence with regards to the Respondent’s actual knowledge of the Complainant and its trademark rights at the moment of time the Respondent acquired the disputed domain name and that, therefore, the Complainant failed to meet its burden of proof in this regard.
The Complainant contends that at the time of the Respondent’s acquisition of the disputed domain name, the Complainant’s trademark had been registered and that the Complainant had already established a large online presence and name under the brand YOUI, for which it was awarded and recognized in 2009. Furthermore, the Complainant states that its services were officially launched in Australia in early 2008 and that it spent a total of AUD 6.048,82 in Google advertising from September 2008 through November 2008, while it currently spends in excess of fifteen million Australian Dollars per annum to promote the YOUI brand awareness. However, on the record of this case, the Complainant did not provide any evidence with regard to the actual scope of its business and the awareness of the public regarding the YOUI Mark on or around the time of the acquisition of the disputed domain name by the Respondent in January 2009 (e.g. number of customers, business volume, spendings on advertising other than Google, if any, actual traffic numbers, number of requests for quotes per months).
Based on the facts and evidence provided by the Complainant, the Respondent may not necessarily have been aware of the Complainant. In this regard, the majority of the Panel especially takes into account that the Respondent is located in Europe (Luxembourg), where the Complainant does not claim to do any business, that the second level of the disputed domain name is not highly distinctive (besides the generic meanings alleged by the Respondent, the majority of the Panel notes that the disputed domain name merely consists of the words “you” and “I”), and that the acquisition of the disputed domain name postdates the Complainant’s launch in Australia only by very few months.
It is also noteworthy that the content of the website available at the disputed domain name showed advertisings related to the Complainant’s business only 16 months after the acquisition of the disputed domain name by the Respondent and only for a limited period of four months, which casts into doubt whether the disputed domain name was in fact registered with the intent to profit from traffic intended for the Complainant’s website. Furthermore, as the content of parked websites is in general automatically generated, the majority of the Panel finds it hard to draw inferences from the content of the website available at the disputed domain name with regard to the bad faith registration element.
Consequently, the majority of the Panel concludes that the third element of the Policy has not been met on the present record in these Policy proceedings and that the Complaint must be denied.
The majority of the Panel notes that the present case is a borderline case and it is, in the majority of the Panel’s view, no clear case of cybersquatting. Furthermore, the Decision here is based on a limited evidentiary record, and it is of course open to the parties to pursue the matter in an appropriate Court should they wish to do so.
For all the foregoing reasons, the Complaint is denied.
Dated: September 3, 2012
With respect, I disagree with the majority in relation to the third element of the Policy.
It is true that the Complainant did not prove that the Respondent had actual knowledge of the Complainant or its trademark rights at the time it purchased the disputed domain name. As other panelists have recognized, this is not surprising, because
“… in a Policy proceeding, without provision for discovery and live testimony, a complainant has little or no opportunity to obtain evidence routinely available in civil litigation but ordinarily within the control of the respondent. For this reason bad faith may be proven inferentially.” Public Service Electric & Gas Company v. Definitive Sports Management LLC, WIPO Case No. D2012-0617 (“the PSEG Decision”).
The PSEG Decision’s discussion of bad faith is instructive. In that case, the Panel found that the Respondent’s conduct did not amount to bad faith registration or use. But is also recognizes the concept of “willful blindness”, where the respondent is a professional domain name registrant who turns a blind eye to third party trademark rights.
Here, the Respondent is a well-known professional domain name registrant that purchases domain names and operates pay-per-click websites. It has been involved in a number of prior disputes under the Policy, including disputes where the complainant was successful (<metart.com>, <lavalamp.com>, <paydayamerica.com>) and disputes where the Respondent was successful (<kaleidoscope.com>, <gaylive.com>, <shoppers.com>, <cheapautoinsurance.com>, <starmail.com>, <thundervalley.com>).
Similar to the three-panel decision in Hydentra, LP. v. Xedoc Holding SA, WIPO Case No. D2008-0454, I find that the disputed domain name was registered to take advantage of the reputation of the Complainant’s business so as to generate revenue from sponsored searches. The Respondent may not have had actual knowledge of the Complainant (and I even doubt this), but would clearly have been aware of the traffic that the disputed domain name was generating at the time it decided to acquire the disputed domain name. It would be unbelievable that a sophisticated domain name acquirer such as the Respondent would not have reviewed traffic details and search engine results before valuing and acquiring the disputed domain name. In my view, this traffic was generated by users looking for the Complainant’s “youi.com.au” website, but who mistyped and left out the “.au” suffix from the domain name. If the Respondent had conducted a simple search using any search engine at the time the Respondent acquired the disputed domain name, the Respondent would have clearly realized that the Complainant existed and had trademark rights in YOUI at that time. The fact that the Complainant cannot prove that the Respondent did not actually notice references to the Complainant in such search results is not fatal to the Complainant’s case.
Moreover, the Respondent’s stated reasons for acquiring the disputed domain name are not believable. The Respondent appears to assert that the domain name was acquired because of its generic value, being the name of a region in South Korea or a word or phrase in Japanese. The Respondent did not present any evidence that in the period that it owned the disputed domain name that the disputed domain name was used in any way associated with this alleged generic meanings. The Respondent says:
“Youi is a region of North Chungcheong in South Korea. There are over 736,000 Google results for YOUI + Korean. Korea has close similarities with China. They share most of the same character set (Kanji). A Google search for Youi+China results in over 3,190,000 results. In Japanese – which also shares the same character set as Chinese, “youi” means “preparation; readiness; arrangements”. An example of a phrase using Youi is “学校に行く用意はできた” which means: “Did you get ready for school?”. As such, the term lends itself to a wide variety of uses, none of which have anything to do
In terms of Korea having close similarities with China, this is an overstatement. Linguistically, the two languages are not very similar. While in Korea, some Chinese characters are still used, this is definitely an exception rather than the rule. In Korea, hangul or a set of letter/character combinations are most often used - these are uniquely Korean. Also, the context in which these words would need to be romanised is unclear, and I question why a Korean or Japanese speaker would use “youi” rather than native Korean or Japanese script.
Tellingly, the Respondent also states: “The Domain Name was registered because it was a 4-character domain and the search results showed it to be very popular without regard to Complainant.” This appears to be an admission by the Respondent that it acquired the disputed domain name because of its popularity in search results, such search results no doubt including references to the Complainant as well as the region in South Korea. If the Respondent acquired the disputed domain name simply because it was a 4-character domain name, without looking any further, this would fall within the willful blindness doctrine discussed above.
In considering lack of actual knowledge, the majority opinion states that the Respondent is located in Luxembourg, and that this assists in reaching the conclusion that the Respondent would not have been aware of the Complainant. I find this unpersuasive. First, the Respondent’s corporate domicile is in Luxembourg, but there is no evidence that the Respondent’s officers, shareholders or employees are located there. For all we know from the record in this case, the Respondent’s key personnel could reside in Brisbane, Australia (the location of the concerned registrar Fabulous.com in this instance). Second, this is not the case of an unsophisticated business registering the dispute domain name for a legitimate business purpose, where likely knowledge of the Complainant is a relevant factor. Here, the Respondent is a sophisticated online business, with knowledge of trademark and cybersquatting legal issues. Third, the Respondent could have easily conducted online searches from Luxembourg, before acquiring the disputed domain name, that would have returned results about the Complainant, and as stated above, it most likely did so.
Dated: September 3, 2012