Decision for dispute CAC-UDRP-102686

The panel is not aware of any other legal proceedings related to the disputed domain name.

UK Trademark registration 00003359657 IR Ivory Research (fig), filed on 10 December 2018 and granted on 22 March 2019 for class 41 services.

UK Trademark registration 00003417470 IVORY RESEARCH, filed on 30 July 2019 and granted on 1 November 2019 for class 41 services.

The Complainant is a licensee of the owner of these registrations, who has expressly authorised it to initiate the present proceedings.

Common law Trademark rights deriving from relevant use of IVORY RESEARCH in www.ivoryresearch.com since 2008.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

Protected rights relied on by the Complainant
Registered trade/service mark
Registered in one country
Unregistered trade mark/service mark
Other:
The trademark IVORY RESEARCH is protected as a portion of the design trademark registered in the UK (Application UK00003359657, registered). Moreover, the trademark protecting the combination of words IVORY RESEARCH is subject to pending trademark application filed to the UK patent Office (Application UK00003417470, pending).

Despite this, there are grounds to believe that the trademark IVORY RESEARCH has been protected by the UK doctrine of common law trademark, and Complainant’s common law trademark IVORY RESEARCH retains the protection during the earlier period not covered by the actual registration. The similar approach was adopted inter alia by the Panels in Tesar Industrial Contractors, Inc. v. Boris Santana (WIPO Case No. D2014-0960) and The Highland Street Connection dba Highland Street Foundation v. Chris McGrath (WIPO Case No. D2006-0516). In Australian Trade Commission v. Matthew Reader (WIPO Case No. D2002-0786), Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, where the Panel has found that the trademark may be protected as both registered and unregistered. Thus, the trademark IVORY RESEARCH shall be encompassed by the UDRP paragraph 4(a)(i). (WIPO Overview 3.0, Section 1.1.) The Complainant’s owns the common law trademark pursuant to the agreement with the Complainant’s predecessor in rights and title in and to the common law trademark. When referring to the use of mark prior to the transfer of right, title and interest to the common law trademark, Complainant acts its predecessor’s assignee and is hereinafter referred to as Complainant.

The mark has been used in commerce since at least 2008. The domain name ivoryresearch.com (which is used by Complainant to provide IVORY RESEARCH-branded services) was created on 25 November 2005. The earliest WebArchive copy is dated as of 13 September 2008: the snapshot evidences the offering of customized sample academic writing.

The trademark IVORY RESEARCH continues to be used in commerce by Complainant in connection with the sale of academic research results and samples of essays (Class 41 of Nice Convention). The combination of the words IVORY RESEARCH has no additional meaning in the English language related to the writing services except as the identifier of Complainant’s services, and may not be considered having a dictionary meaning as it is explained in the WIPO Overview 3.0, Section 2.10. The trademark comprises no disclaimed terms as is it provided for in the WIPO Overview 3.0, Section 1.2.3. The acquired distinctiveness as a common law trademark IVORY RESEARCH is based on the following evidence:

Registered trademark:
1. Application UK00003359657 (Design) – registered; the textual part says “Ivory Research” and is clear, concise and distinctive as a detachable part of the mark (trademarks.ipo.gov.uk)

2. Application UK00003417470 (Word) – pending; the registration aims to support the design trademark (trademarks.ipo.gov.uk)

Common law trademark (in the UK):
3. WebArchive copies: web.archive.org

4. Mentions on the independent feedback websites:
- Sitejabber:/www.sitejabber.com

- Trustpilot: www.trustpilot.com

5. Facebook page (created: 16 March 2011): www.facebook.com operated by Complainant
6. Twitter page (created: July 2010) twitter.com operated by Complainant.
7. Ivory Research comment on the article mentioning the website offering the writing service (posted 4th November 2010): blogs.reuters.com

8. Agreements between the Complainant and Complainant’s predecessors (earlier the brand was operated by the company INSTA RESEARCH LTD (No: 08896347) engaged in educational support services and incorporated under the laws of the England and Wales) (attached files).
9. Trademark Licence Agreement between the Complainant and COREFORCE LTD, a registered trademark owner, authorizing the Complainant to protect the trademark IVORY RESEARCH and accept the transferred domain names.
10. Letter of Consent from a registered trademark owner.
11. Analytics as to the use of the website ivoryresearch.com.
12. Advertising materials – costs for Facebook ads.
13. Excerpt from the Registrar’s of ivoryresearch.com website confirming the Complainant’s rights to use the website.
14. Excerpt from Google’s search engine results where Complainant’s website appears among the first results sought by the keyword IVORY RESEARCH.

Complainant is interested in and takes all necessary steps to retain ownership and rights in and to the trademark IVORY RESEARCH as it constitutes an important part of its business. The trademark IVORY RESEARCH is of great value to Complainant, thus the Complainant has acquired the rights to the registered trademark (application UK00003359657) to lodge a complaint under the UDRP and request the transfer of the infringing domain names to the ownership of the Complainant. The website ivoryresearch.com is Complainant’s primary mean of communicating with prospective customers. Accordingly, the domain names and the Internet have become an important communication and marketing tool and revenue source for Complainant.

The further development of the brand is relied upon as identifying the Complainant as the sole source of IVORY RESEARCH-branded services. Complainant has expended considerable time, effort and money in advertising, promoting and selling services in connection with the IVORY RESEARCH mark as provided for in the attached evidence. The feedback is primarily positive and signals of the proper goodwill within its service sector, at least among the targeted audience of commercial writing consumers and professionals offering identical or similar services (Fairview Commercial Lending, Inc. v. Aleksandra Pesalj (WIPO Case No. D2007-0123) and Imperial College v. Christophe Dessimoz (WIPO Case No. D2004-0322)). The acknowledgment and distinctiveness acquired by the Complainant’s trademark may serve as the additional assertion of the achieved significance and the reason Respondent has been targeting the Complainant’s mark, especially in the light of the contents of the websites which domain names infringe the Complainant’s trademark. (WIPO Overview 3.0, Section 1.3)

Thus, the Complainant has strong indicia to believe its trademark IVORY RESEARCH has acquired the acknowledgment on the relevant market and become a distinctive identifier which consumers associate with the Complainant’s services.
Complainant’s Rights
Other:
Request for Consolidation

The Registrants:
1). www.ivoryresearch.net - International Search Marketing Ltd (Dekk House, Rue de zippora, Providence, Mahe, 2009, Seychelles), tel: 0997132612, email: doma.1992@mail.ru
2). ivory-research.com - Marianna Gurali (Global Gateway 1773, Rue de la Perle, Providence, Mahe, 00000, Seychelles), tel: +1 5713326243, email: financialpa@inbox.lv

Provided that there are two domain names disputed (namely, ivoryresearch.net and ivory-research.com) registered by different registrants, the Panel might come to the conclusion that the complaint shall be divided into two separate claims.

Nonetheless, both claims and the websites accessible through the domain names in question are identical. Complainant hereby request the consolidation of his complaints in a single UDRP case.

As found in many Panel decisions, the consolidation of multiple registrants as respondent in a single administrative proceeding may in certain circumstances be appropriate under Paragraph 3(c) or 10(e) of the Rules, provided that Complainant can demonstrate that the disputed domain names or the websites to whom they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. The circumstances that led Complainant to the belief that essentially there is only one underlying Respondent, are set forth in the arguments relating to the Respondent’s bad faith.

In the event that the Panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individually named respondents. Similar to Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons (WIPO Case No.D2010-0281).

In light of the above, it is Complainant’s belief that the present one is a clear case where the disputed domain names are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert. Accordingly, Complainant requests that the Panel, as ruled in prior decisions issued under the Policy, consolidate the disputed domain names registered under the different names according to the Rules, Paragraphs 3(c) and 10(e).
ADDITIONAL EXPLANATIONS:

Legal Grounds
Domain name is confusingly similar to the protected mark

The manner in which the domain name is confusingly similar to the protected mark:

ADDITIONAL EXPLANATIONS:
Without the Complainant’s authorization, permission or consent, and with full knowledge of the Complainant’s rights to and in both common law trademark and registered trademark rights accrued due to Complainant’s long-standing presence on the market, Respondents registered the domain names ivoryresearch.net and ivory-research.com with the Registrars mentioned above. Both domain names replicate Complainant’s common law trademark “Ivory Research” and the textual portion of the registered UK trademark (Application #UK00003359657) for Ivory Research logo, as well as the domain name of the website the Complainant uses to offer associated services (namely, ivoryresearch.com).

The Respondent’s ivoryresearch.net domain name was registered on 20th June 2012. The only difference between them is the TLD: Respondent used .net instead of the original Complainant’s .com.

The ivory-research.com domain name was registered on 6th June 2014. The only difference between the Respondent’s domain name and the original one is the hyphen used between the portions of the IVORY RESEARCH trademark. The gTLD remains the same; moreover, the change of the generic TLD in both cases does not have to affect the decision to consider it sufficient for enabling infringing domain name to avoid the finding of similarity with the established trademark (WIPO Overview 3.0, Section 1.11.1; also Australian Trade Commission v. Matthew Reader (WIPO Case No. D2002-0786)).

Both websites offer the writing services similar to those the Complainant offers via the website ivoryresearch.com. Nothing on the websites ivoryresearch.net and ivory-research.com clearly says the services are to be provided not on behalf of Complainant, but suggest the services are provided by Complainant itself (WIPO Overview 3.0, Section 1.9). Moreover, the headers of the websites ivoryresearch.net and ivory-research.com retain the Complainant’s trademark executed in the form of the domain name derived from the Complainant’s trademark. Complainant believes that the disputed domain name ivoryresearch.net incorporates the entirety of the trademark; the disputed domain name ivory-research.com through adding the hyphen (originally a typographic symbol facilitating the reading and not designed to add distinctiveness) had to disguise the fact that it incorporates the entirety of the trademark. (WIPO Overview 3.0, Section 1.7 and 1.10)

Thus, the Complainant believes that Respondent adopted the ivoryresearch.net and ivory-research.com names with the intent to exploit Complainant’s goodwill in its marks.

The Respondent does not have any rights or legitimate interest in the domain name(s)
Categories of issues involved:
ADDITIONAL EXPLANATIONS:
The Complainant has acquired the rights in the registered trademark IVORY RESEARCH pursuant to the written arrangements with registered trademark owner who in turn authorized the Complainant to file a complaint under the UDRP on behalf of the trademark owner and, importantly, consents that disputed domain names are to be transferred to the Complainant. The Complainant also undertook some reasonable steps to ensure that the Complainant is the exclusive user of the domain name ivoryresearch.com.

Under Paragraph 4(c) of the Policy, Respondent has no legitimate interest in the disputed domain names in view of Complainant’s prior statutory and common law rights in the trademark IVORY RESEARCH. These rights were established by the Complainant’s continuous use in commerce of IVORY RESEARCH long prior to Respondent’s registration of disputed domain names. Moreover, Complainant is considered the ivoryresearch.com domain name holder as is confirmed by the Excerpt attached to this complaint and thus is to be associated with the services offered on the original website along the footer of the website containing the information on the Complainant.

Complainant did not grant the right or entitlement to use the IVORY RESEARCH trademark to Respondent nor did they give permission or consent to use the Complainant’s trademark IVORY RESEARCH. Complainant is not aware and has not been notified of any rights to the trademark the Respondent is or may be granted with. Also, Respondent is not (either as an individual, business or other organization) commonly known by the name IVORY RESEARCH.

As has been mentioned, Complainant believes the Respondent uses the disputed domain names to falsely suggest affiliation with the trademark owner, namely the Complainant, and the correlation between the disputed domain names and Complainant’s rights to and in the mark is present to support the belief (WIPO Overview 3.0, Section 2.5). The websites’ contents seem to aim at impersonating the Complainant (WIPO Overview 3.0, Section 2.5.1). At the same time, Complainant is afraid that it is not clear to Internet users visiting the Respondent’s websites that they are not operated by the Complainant (WIPO Overview 3.0, Section 2.5.2(iii)).

Moreover, Complainant believes that Respondent registered and is using the domain name as a pretext for commercial gain or other such purpose inhering the Respondent’s benefit (WIPO Overview 3.0, Section 2.5.2(i)). In this particular case, Respondent may be gaining or seeking reputational and/or bargaining advantage (WIPO Overview 3.0, Section 2.5.3). According to the website contents, namely offering the same services Complainant does, Complainant assumes Respondent its direct competitor in the same line of business and in the same geographical location (namely, English-speaking countries). WIPO Panel earlier found in Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow (WIPO Case No. D2005-0073), competitor status waives Respondent’s right to use the trademark in the disputed domain name or make any bona fide use of it.

Complainant also notices that the Respondent may be a disguise used by the real registrant seeking to mask their identity to avoid being contactable (WIPO Overview 3.0, 2.13.2). If Respondent reveals the underlying registrant, Complainant is to replace the Respondent, if the panel decides it is appropriate to grant the remedy.

The domain name(s) has been registered and is being used in bad faith
Categories of issues involved:
ADDITIONAL EXPLANATIONS:
Complainant believes Respondent acts in bad faith, as its registration of disputed domain names constitutes the following scenario: by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creation likelihood of confusion with the Complainant’s mark as to the source of Complainant’s services. Respondent uses the domain names for its own commercial benefit, as it clearly sells writing services through the websites.

As may be construed pursuant to the contents of the websites, the Respondent does not identify himself as the provider of the services, thus implying that the services are rendered by the Complainant. Complainant believes such Respondent’s use of the domain name and the trademark in the headings may not be associated with a bona fide offering of services. Respondent’s behavior is not compliant with the English law doctrine of fair use or a legitimate noncommercial use of the domain name, as such actions may be construed as Respondent’s intent for commercial gain to misleadingly divert consumers to take commercial advantage of the potential for confusion; as the services are to be provided by the qualified writers, Complainant assumes Respondent should have known of the Complainant’s trademark at the time of the registration of the domain name (similar to the case of Imperial College v. Christophe Dessimoz (WIPO Case No. D2004-0322)).

Google indicates the existence of the Complainant’s long term activity under the name IVORY RESEARCH. The Complainant’s website indeed appears as the first results on Google search tool with the keyword IVORY RESEARCH. In The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran (WIPO Case No.D2002-0770), it was held: “Respondent knew or should have known of the existence of Complainant, Complainant’s trademark being widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith”.

On the other hand, the name of the company or individual providing the services is not specified on the websites, thus raising the assumption that Respondent intends to conduct business under the name of Complainant and solicit the payments for writing services through the websites in question, what has been previously attributed by the panel as not constituting “non-commercial or fair use of the disputed domain name” in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj (WIPO Case No. D2007-0123). Moreover, the panels in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj (WIPO Case No. D2007-0123) and Hewitt Associates LLC v. Robin Cuff (FORUM Case No. FA376375) alleged that, in such circumstances, “the Respondent’s offering of services might be fraudulent, reducing further any claim to being a “bona fide offering””. Such Respondent actions are prohibited and constitute per se bad faith under the Paragraph (4)(c) of the Uniform Domain Name Dispute Resolution Policy.

The following circumstances may serve as evidence that the Respondent’s intent in registering the disputed domain name was in fact to profit from the Complainant’s goodwill by exploiting the trademark as follows:
● Respondent’s likely knowledge of the Complainant’s rights to the trademark associated with writing services in the light that Complainant and Respondent are operating on the same market and provided the history of the brand development;
● Website content targets the Complainant’s trademark through the mention in the header of the websites and in the domain names;
● Absence of any conceivable good faith use, rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the domain name or disclaimer explaining Respondent’s good faith and rights to use the trademark;
● The close proximity between the goods and services offered by Complainant and Respondent that may indicate that Respondent is taking advantage of the similarity between Complainant’s mark and the domain name and is doing so for commercial gain (SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L. (WIPO Case No. D2008-0792));
● The nature of the domain names in question (namely, change of gTLD and addition of a hyphen between the portions of the trademark);
● General worldwide accessibility of the Complainant’s trademark;
● The domain name is also virtually identical with the domain name under which the Complainant does business and sends and receives its emails (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings (WIPO Case No. D2004-0971))

Summing up, Complainant is afraid that Respondent benefits commercially by charging fees for writing services that Internet users might never receive or which quality is poorer than could have been expected considering the Complainant’s goodwill and advertisements. The Respondent accomplishes this goal by the use of a domain name that is confusingly similar to the Complainant’s trademark – a trademark associated with writing services. As a result, the Panel determines that the Respondent is attempting to divert Internet users for commercial gain by attracting them to its website through a likelihood of confusion with Complainant’s mark, which is conclusive evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy, similar to Mostchoice.com Inc. v. Xianqing Zhu c/o Most choice.com, Inc. (NAF Case No. FA424540); Baudville, Inc. v. Henry Chan (WIPO Case No. D2004-0059); and Fairview Commercial Lending, Inc. v. Aleksandra Pesalj (WIPO Case No. D2007-0123). In Edmunds.com, Inc. v. Digi Real Estate Foundation (WIPO Case No. D2006-1043), the Panel have found that “the content of a website […] is relevant in the finding of bad faith use […] because where a potential visitor, after typing in a confusingly similar domain name, reaches the Respondent’s website offering similar contents, there is an implied act of unfair competition (deception of the consumer) and such an act is an evidence of bad faith.”

Complainant notices that the fact that the Respondent hides its identity behind a privacy shield suggesting that the Respondent might be aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (America Online, Inc. v. Antonio R. Diaz (WIPO Case No. D2000-1460) and Sanofi, Genzyme Corporation v. Domain Privacy (WIPO Case No. D2016-1193)).

Given the contents of the websites, Complainant is also aware of the risk that the underlying registrant might use Respondent as a privacy or proxy service, and hopes this risk will not prevent the Panel assessment of the UDRP elements (WIPO Overview 3.0, Section 3.6). Provided that Respondent is eventually considered a privacy or proxy service, Complainant would like to address it as an evidence of inference of bad faith.

Despite the fact that the disputed domain names are registered before the trademark UK00003359657 has been registered, Complainant addresses the common law trademark protection which had been accrued long before the disputed domain names were registered. Complainant believes Respondent knew and intended to register the domain names to unfairly capitalize on the complainant’s then nascent (not yet registered) trademark rights, which is widely recognized by the panels as act in bad faith (WIPO Overview 3.0, Section 3.8.2).

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The two domain names disputed (namely, ivoryresearch.net and ivory-research.com) are registered by different registrants. Despite this, the Complainant requested the consolidation of his complaints in a single UDRP case.

The consolidation of multiple registrants as respondent in a single administrative proceeding may in certain circumstances be appropriate under Paragraph 3(c) or 10(e) of the Rules, provided that Complainant can demonstrate that the disputed domain names or the websites to whom they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.

The Complainant, however, has not provided sufficient evidence that both domain names have common control or any other type of relationship between the Respondents. For that reason, the present decision is adopted in relation to the disputed domain name <ivoryresearch.net> only but the domain name <ivory-research.com> is not considered. The latter in any case will have to be the subject of a separate Complaint.

Regarding <ivoryresearch.net>, the Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

As stated above, the consolidation of both cases is not accepted, so this decision refers only to the domain name <ivoryresearch.net>.

I. RIGHTS

The disputed domain name is confusingly similar to the Complainant’s trademark IVORY RESEARCH. Although the fact that the Complainant's trademark registrations are subsequent to the registration of the disputed domain name does not per se preclude the concurrence of the first requirement, it is necessary to highlight in any case that the Complianant has demonstrated unregistered common law rights derived from a relevant use of its trademark in the pertinent sector at least since 2008.

II. NO RIGHTS OR LEGITIMATE INTERESTS

The Respondent has not submitted any response. Therefore, it has submitted no information on possible rights or
legitimate interests it might hold. On its part, the Complainant has submitted information and arguments which
allow it to be reasonably assumed that the Respondent has no rights or legitimate interest in the domain name in
dispute.

As the WIPO Arbitration and Mediation Center pointed out in UDRP case No. D20020856:

“As mentioned [in the decision], the Respondent has not filed a Response and is therefore in default. In those
circumstances when the Respondent has no obvious connection with the disputed Domain Names, the prima
facie showing by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.“ WIPO Case No.
D20020273 <sachsenanhalt>; WIPO Case No. D20020521 <volvovehicles.com>.

Furthermore, from the trademark search submitted by the Complainant can be seen that the Respondent does
not own any trade mark registration with that name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain
name.

III. BAD FAITH

The Respondent has, as a result of his default, not invoked any circumstances which could invalidate the
Complainant´s allegations and evidence with regard to the Respondent´s registration and use of the disputed
domain name in bad faith.

Paragraph 4(b) (iiii) of the Policy provides that the following circumstances are deemed to be evidence that the
Respondent has registered and is using the disputed domain name in bad faith:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet
users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as
to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its
website or location.

The Complainant's IVORY RESEARCH trademark has been the subject of relevant use on the Internet since 2008 and there are no circumstances that would allow us to assume that there is any legitimate reason for the Respondent to register a domain name that is identical to the Complainant's trademark and domain name. In addition, the Respondent's website offers the same type of services in which the Complainant's trademark was known, so it seems clear that there was a purpose of impersonation.

As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochki, WIPO Case No. D2017-0334:

"It is clear in the Panel's view that in the mind of an Internet user, the disputed domain names could be directly
associated with the Complainant's trademark, which is likely to be confusing to the public as suggesting either an
operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO
Case No. D2003-0327)."