Paragraph 4(a) of the UDRP Policy provides that to obtain the transfer of the disputed domain name, complainant must prove that each of the following elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
By providing documentation of the trademark registrations, the Complainant established it has rights in the mark AMAYANI dating back to 2010/2011. Both the German and the EU trademarks were registered prior to the registration of the disputed domain name (November 6, 2015) and, in case of the EUTM, it is valid also in the territory where the Respondent resides (Sweden).
The disputed domain name consists of the word "amayani" and in the gTLD ".com". The disputed domain name <amayani.com> is identical to the Complianant's mark, since it contains the AMAYANI mark in its entirety and the only difference between the disputed domain name and the Complainant's mark is the suffix ".com". It is a well-established principle that the top-level suffix in the domain name is to be disregarded (as it is a technical requirement) under the test for identity or confusing similarity (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
Accordingly, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the UDRP Policy.
The Complainant has argued that the Respondent lacks rights or legitimate interests in respect of the disputed domain name because, inter alia, "[t]heRespondent is not making legitimate non-commercial or fair use of the domain. The Respondent rather only uses the domain amayani.com to receive buying offers for the domain", which is supported by evidentiary documents submitted with the Complaint; "[t]heRespondent is not commonly known as <Amayani> and the Respondent is not owner of trademarks consisting of the word <amayani>"; "[t]he Complainant has not authorized the Respondet to use the trademark AMAYANI"; "[t]he registration of the protected trademarks precedes the registration of the domain amayani.com", which is proved by an evidentiary document submitted with the Complaint; the "name or the contact details of the Respondent contain no reference to <amayani>".
Since the task of proving a negative fact, requiring information that is often primarily within the knowledge of the respondent, is often impossible, Panelists in UDRP proceedings have generally agreed that it is sufficient for the complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the respondent (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition: "complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of UDRP".)
The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the paragraph 4(a) of the UDRP Policy.
The Panel finds that the disputed domain name was registered and is being used in bad faith for the following
reasons.
The circumstances (all of them supported by evidentiary documentation submitted by the Complainant) that:
i) the Respondent, through a domain broker, has contacted the Complainant, inviting the same to submit a "serious 5 figure offer" for the domain name;
ii) the Respondent has not replied to/accepted the offer (i.e. Euro 1.000) made through the Complainant's authorized representative; and
iii) the domain name is offered for sale on the website to which it resolves
are sufficient for this Panel to determine that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket expenses related to the domain name (paragraph 4(b)(i) of the UDRP Policy).
The Complainant also argues that bad faith exists pursuant to paragraph 4(b)(ii) of the UDRP Policy, stating that disputed domain name was registered by the Respondent "in order to prevent the Complainant as the owner of the trademark AMAYANI from reflecting the mark in the corresponding domain name". The Panel notes that the cited provision of the Policy requires that "the respondent has engaged in a pattern of such conduct" too. It is a consensus view of UDRP Panels that "[a] pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks" (see paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). Nevertheless, in this case, neither the Complainant has provided any evidence in this regard, nor this Panel is aware about any facts relevant to determine that Respondent has engaged in a pattern of conduct of preventing the trademark holder (Complainant) from reflecting the mark in a corresponding domain name.
As pointed out above, the Complainant has already proved the Respondent's bad faith registration and/or use of the disputed domain name pursuant to paragraph 4(b)(i) of the concerned Policy. Accordingly, the Panel finds that the Complainant has proven the third element of the paragraph 4(a) of the UDRP Policy.
|