{ "case_number": "CAC-UDRP-102727", "time_of_filling": "2019-10-22 13:32:34", "domain_names": [ "ivoryresearchreview.com", "ivoryresearchscam.com", "ivoryessays.com", "ivoryresearchessays.com", "theivorywriters.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "IVORY RESEARCH CO LTD" ], "complainant_representative": null, "respondent": [ "Peter Ross" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nTHE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS\r\n\r\nThe Complainant is a licensee of the owner of the UK trademark No. UK00003359657, registered on March 22, 2019 that includes the “Ivory Research” word element. The trademark owner is COREFORCE LTD, Makariou Ill, 22 MAKARIA CENTER, 4th floor, Flat\/Office 403, Larnaca, Cyprus, 6016.\r\n\r\nThe Complainant alleges that the trademark IVORY RESEARCH is protected as a portion of this design UK trademark. \r\n\r\nThe trademark protecting the combination of words IVORY RESEARCH is subject to pending trademark application filed to the UK patent Office (Application UK00003417470, pending). The applicant is the same company: COREFORCE LTD, Cyprus.\r\n\r\nThe Complainant also believes 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.\r\n\r\nThe Complainant 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. \r\n\r\nWhen referring to the use of mark prior to the transfer of right, title and interest to the common law trademark, the Complainant acts its predecessor’s assignee. The Complainant provides copies of 2 domain name transfer agreements under which the domain name was first transferred from INSTA Research Ltd to Diletix IP (date of the agreement - October 12, 2018) and later from Diletix IP to the Complainant (date of the agreement - December 12, 2018). \r\n\r\nAccording to the Complainant, the mark has been used in commerce since at least 2008. The domain name (which is currently used by the Complainant to provide IVORY RESEARCH-branded services) was created on 25 November 2005. \r\n\r\nThe trademark IVORY RESEARCH continues to be used in commerce by the Complainant in connection with the sale of academic research results and samples of essays.\r\n\r\nThe Complainant states that the combination of the words IVORY RESEARCH has no additional meaning in English language related to the writing services except as the identifier of Complainant’s services.\r\n\r\nThe Complainant alleges that it has expended considerable time, effort and money in advertising, promoting and selling services in connection with the IVORY RESEARCH mark. \r\n\r\nThe Complainant believes that the Respondent has been targeting the Complainant’s mark, especially in the light of the contents of the websites of the Respondent. \r\n\r\nAccording to the Complainant, the Respondent registered the disputed domain names without the Complainant’s authorization, permission or consent, and with full knowledge of the Complainant’s common law trademark rights accrued due to Complainant’s long-standing presence on the market. \r\n\r\nThe domain was registered on October 26, 2018; the domain was registered on October 26, 2018; the domain was registered on August 31, 2018; the domain was registered on August 31, 2018 and the domain was registered on September 14, 2018.\r\n\r\nThe Complainant states that all the disputed domain names replicate Complainant’s common law trademark “Ivory Research” and the textual portion of the registered UK trademark for Ivory Research logo in general or in part, as well as the Complainant’s domain name (). \r\n\r\nThe Complainant believes that the registration of the disputed domain names is in fact an unfair competition practice coming from an unnamed competitor, namely a company offering the services similar to the Complainant’s. Thus, provided that the proxy\/privacy service has been used to hide the underlying registrant, the bad faith of the Respondent is highly probable. \r\n\r\nThe Complainant indicates that some of the disputed domain names are registered at the same time and have a similar pattern of providing the information, the and websites grant access to the video materials depicting the website and relying on the information placed on the website. \r\n\r\nThe Complainant points out that the and website is also intended to mislead the customer by suggesting without evidence that the employees of the Complainant have switched the employer and persuading the customer that the quality of the Complainant’s service is to become poor. \r\n\r\nThe confusing similarity may also be based on the fact that the Respondent has registered a bunch of domain names containing Complainant’s trademark or a portion thereof.\r\n\r\nThe Complainant points out that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) might not prevent a finding of confusing similarity under the first element. \r\n\r\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES\r\n\r\nThe Complainant contends that it did not grant the right or entitlement to use the IVORY RESEARCH trademark to the Respondent nor did give permission or consent to use the Complainant’s trademark IVORY RESEARCH. \r\n\r\nThe Complainant is not aware and has not been notified of any rights to the trademark the Respondent is or may be granted with. Also, the Respondent is not (either as an individual, business or other organization) commonly known by the name IVORY RESEARCH.\r\n\r\nThe Complainant’s other arguments may be summarized as follows:\r\n\r\n- the and might be created and set up to suggest falsely affiliation with the Complainant; \r\n\r\n- the and might be created in order to uphold and endorse the contents of and , as the websites are referring and depicting the webpage in the content;\r\n\r\n- the Respondent also targeted the consumers who might access the disputed domain names during the search process conducted by a potential customer of the Complainant using the trademark IVORY RESEARCH as a search parameter;\r\n\r\n- the Respondent may be tarnishing the trademark and at the same time offering the services of the competitor in a way that precludes the customer from exploring other options; \r\n\r\n- according to the website contents of the links to the competitors, namely offering the same services, the Complainant assumes the Respondent is a direct competitor in the same line of business and in the same geographical location and competitor status waives Respondent’s right to use the trademark in the disputed domain names or make any bona fide use of it; \r\n\r\n- the Complainant believes that considering the pattern of parallel registration of the disputed domain names and contents of the websites, the disputed domain names were registered by the Respondent with the intent to create impression and notion of a so-called “criticism sites”. \r\n\r\nHowever, evidence supporting its non-commercial, genuinely, fair and not misleading or false use is absent;\r\n\r\n- the websites somewhere comprise the link to a competitor’s website with some advertisement-like information able to persuade the customer to follow the link. The Complainant also notices that the Respondent may be a disguise used by the real registrant seeking to mask their identity to avoid being contactable.\r\n\r\n\r\nTHE DISPUTED DOMAIN NAMES WERE REGISTERED AND BEING USED IN BAD FAITH\r\n\r\nAccording to the Complainant, the Respondent acts in bad faith, as registration of disputed domain names constitutes the following scenario: the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor and by using the disputed domain names, the 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. The Respondent uses the disputed domain names for its own commercial benefit, as it clearly sells writing services on the sites. \r\n\r\nThe Complainant believes such Respondent’s use may not be associated with a bona fide offering of services or making endorsements or references to the competitors. \r\n\r\nRespondent’s behavior is not compliant with the English law doctrine of fair use or a legitimate non-commercial use of the domain name, as well as unfair competition, 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, the Complainant assumes the Respondent should have known of the Complainant’s trademark at the time of the registration of the disputed domain names. \r\n\r\nAccording to the Complainant, the following circumstances serve as evidence that the Respondent’s intent in registering the disputed domain names was in fact to profit from the Complainant’s goodwill:\r\n\r\n- Respondent’s likely knowledge of the Complainant’s rights to the trademark associated with writing services in the light that the Complainant and the Respondent are operating on the same market;\r\n\r\n- Respondent’s pattern of bad behavior: a scenario where the Respondent, on separate occasions, has registered trademark-abusive domain names, directed at the same brand owner;\r\n\r\n- Website content targets the Complainant’s trademark;\r\n\r\n- Absence of any conceivable good faith use, rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain names or disclaimer explaining Respondent’s good faith and rights to use the trademark;\r\n\r\n- The close proximity between services offered by the Complainant and the Respondent;\r\n\r\n- The nature of the disputed domain names in question (namely, coupling the trademark or portion thereof with a pejorative or service-related word) aiming at tarnish the Complainant’s goodwill;\r\n\r\n- The Complainant is afraid that the Respondent benefits commercially by attempting to divert Internet users for commercial gain by attracting them to its website through a likelihood of confusion with the Complainant’s mark;\r\n\r\n- As all the four domain names in question somehow solicit or redirect the potential customer to the website 15writers.com there is strong indicia to believe that the true registrants are or are under control of Complainant’s competitors. \r\n\r\nThe Complainant contends that despite the fact that all the disputed domain names were registered before the UK trademark registration, the Complainant relies on the common law trademark protection which had been accrued long before the disputed domain names were registered. \r\n\r\nThe Complainant believes the Respondent knew and intended to register the disputed domain names to unfairly capitalize on the Complainant’s then nascent (not yet registered) trademark rights.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names. ", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n", "rights": "The Panel finds that the present dispute falls outside UDRP scope and believes there is no need to consider each element separately for the reasons explained below. ", "no_rights_or_legitimate_interests": "The Panel finds that the present dispute falls outside UDRP scope and believes there is no need to consider each element separately for the reasons explained below.", "bad_faith": "The Panel finds that the present dispute falls outside UDRP scope and believes there is no need to consider each element separately for the reasons explained below.", "procedural_factors": "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.", "decision": "Rejected", "panelists": [ "Igor Motsnyi" ], "date_of_panel_decision": "2019-12-04 00:00:00", "informal_english_translation": "In this proceeding, the Complainant relies on:\r\n\r\n- UK design trademark containing the “Ivory Research” element No.UK00003359657, registered on March 22, 2019;\r\n- UK word trademark application “Ivory Research”, application No. UK00003417470, filing date July 30, 2019;\r\n- common law rights in the “Ivory Research” mark (unregistered trademark). \r\n", "decision_domains": { "IVORYRESEARCHREVIEW.COM": "REJECTED", "IVORYRESEARCHSCAM.COM": "REJECTED", "IVORYESSAYS.COM": "REJECTED", "IVORYRESEARCHESSAYS.COM": "REJECTED", "THEIVORYWRITERS.COM": "REJECTED" }, "panelist": null, "panellists_text": null }