Decision for dispute CAC-UDRP-108584

The disputed domain name was registered by the Respondent on September 2, 2022.

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

IDENTICAL OR CONFUSINGLY SIMILAR

The first requirement that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to the Complainant’s trademark or service mark rights.

There are two elements of this test: the Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark or service mark.

The Complainant has proven ownership, among others, of the registered trademark “ŠKODA”, identified in section “Identification of rights” above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trademark.

The disputed domain name differs from the Complainant’s trademark “ŠKODA” only by the replacement of the "Š" by a "S" and by the top-level domain ".AI". 

It is well established that the top-level domain may generally be disregarded in the confusing similarity test (see, for example, WIPO case No. D2016-2547).

It is also well established that diacritic and punctuation marks in the trade marks are disregarded in the confusing similarity test (see, for example, WIPO Case No. D2008-0981).

In the light of the above, the Panel considers that the disputed domain name is confusingly similar to the Complainant's trademark “ŠKODA”.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

RIGHTS OR LEGITIMATE INTERESTS

The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the respondent has rights or legitimate interests in a domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent] [has] acquired no trademark or service mark rights; or

(iii) [the Respondent] [is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

This is a non-exhaustive list of circumstances in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement falls on the Complainant. UDRP panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”.

Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent and the burden of proof on this requirement shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in a domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

In particular, the Complainant states that:

- it has not granted the Respondent any license, authorization, or consent to use its trademarks or any related intellectual property rights;

- the Respondent is neither affiliated with the Complainant nor with any entity within the Complainant’s group;

- the Respondent holds no rights in the Complainant’s trademarks, nor any other rights that would justify the registration or use of the disputed domain name;
- there is no evidence that the Respondent is commonly known by the disputed domain name; 
- the disputed domain name redirects to a "For Sale" page.

In the absence of a Response, there is no indication in the present case that the Respondent is commonly known by the disputed domain name. The Panel notes that the disputed domain name is constituted by the first letter of the Respondent's name followed by his surname. However, the Panel considers that in the circumstances of the present case, this fact cannot be considered as evidence of the fact that he is commonly known by the disputed domain name. In addition, the Panel points out that other panels considered that even if a respondent can demonstrate that the domain name in question constitutes their personal name, there must be no countervailing evidence that that personal name has merely been adopted opportunistically by a respondent in order to give a spurious air of legitimacy to an otherwise questionable registration (see, for example, WIPO Case No. D2017-0111). The Panel shares this view and considers that in the circumstances of this case there is evidence that the disputed domain name has been registered opportunistically by the Respondent. 

Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under paragraph 4(c) of the Policy or other evidence of rights or legitimate interests in the disputed domain name.

The Respondent does not appear to make any legitimate non-commercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, the disputed domain name redirects users to a "For Sale" webpage.

Taking into account that the Complainant has not granted the Respondent any license or other rights to use any of its trademarks or intellectual property rights, that the Respondent is neither affiliated with the Complainant nor with any entity within the Complainant’s group, that there is no evidence that the Respondent has any rights that would justify the registration or use of the disputed domain name, that there is no evidence that the Respondent is known as the disputed domain name and that the disputed domain name redirects users to a "For Sale" webpage, the Panel cannot imagine any possible legitimate justification for this use, and the Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

BAD FAITH

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that [the Respondent] [has] registered or [has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 [disputed] domain name; or

(ii) [the Respondent] [has] registered the [disputed] domain name in order to prevent the owner of the trademark 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 [the Respondent's] web site 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] web site or location or of a product or service on [the Respondent's] web site or location.

The Panel, on the basis of the evidence presented, agrees with the Complainant's contentions that the disputed domain name was registered in bad faith and that it has been used in bad faith.

The Panel observes that it is well established that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative. Therefore, even where a complainant is not able to demonstrate the literal application of one of the above-mentioned scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behaviour detrimental to the complainant’s trademark would also satisfy the complainant’s burden.

The Respondent should have performed an internet search, aimed at excluding possible conflicts with third party rights. Therefore, the Respondent has failed to carry out such a search and has to be considered responsible for the resulting abusive registration under the concept of wilful blindness (see, for example, WIPO Case No. D2018-1182). Consequently, this circumstance is considered by the Panel as evidence of bad faith.

The Panel considers that in the circumstances of this case, where the price showed in the landing webpage for purchasing the disputed domain name exceeds 3,000 Euros, on the balance of probabilities the disputed domain name has been registered primarily for the purpose of selling it to the Complainant or to a competitor for a price far exceeding documented out-of-pocket registration costs. Therefore, this circumstance is considered by the Panel as evidence of bad faith.

The Panel observes that if the Respondent had legitimate purposes in registering and using the disputed domain name it would have filed a response in this proceeding.

The Panel, having taken into account the Respondent's knowledge of the "ŠKODA" trademark at the time of the disputed domain name’s registration, the fact that the disputed domain name points to a "For Sale" webpage where the disputed domain name is offered at a price exceeding 3,000 Euros, and that no response to the complaint has been filed considers that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.