{ "case_number": "CAC-UDRP-101337", "time_of_filling": "2016-11-14 09:01:45", "domain_names": [ "lunchmail.com" ], "case_administrator": "Aneta Jelenová (Case admin)", "complainant": [ "Sven Mark Sawatzki" ], "complainant_representative": null, "respondent": [ "WHOIS PRIVACY PROTECTION SERVICE, INC." ], "respondent_representative": null, "factual_background": "The factual background of the dispute can be summarized as follows:\r\n\r\nThe Complainant owns an EU trade mark “Lunchmail” No. 8274193.\r\n\r\nThe Complainant provides online services to restaurants since 2008 under the name \"Lunchmail\". These services include the provision of email newsletters about lunch menus to guests of restaurants. The Complainant provides such services internationally via several domain names, including , , , , etc.\r\n\r\nThe disputed domain name () (hereafter the “Domain Name”) was first registered on 27 September 2000 (this was confirmed by the Registrar) by a third party, Compendium, Inc. (hereafter \"Compendium\") (the creation date is prior to the registration\/application date of Complainant's trademark). The Complainant asserts that it has contacted Compendium several times to acquire the Domain Name, but that its attempts remained unanswered and unsuccessful. The Complainant asserts that Compendium never actively used the Domain Name. The Complainant asserts that Compendium only used the Domain Name to redirect visitors to a different website (at ). The Complainant submitted a screenshot of a \"Wayback Machine\" service (through ) evidencing the redirection to on the capture date 13 March 2016. On the capture date 6 October 2016, the Wayback Machine service indicated: \"This Domain Name Has Expired\".\r\n\r\nThe Whois history of the Domain Name shows that the original expiration date of the Domain Name for 2016 was 27 September 2016. Compendium did apparently not renew its registration of the Domain Name. It seems that, shortly after the expiration of the Domain Name, the Domain Name was registered by the Respondent (a company using or providing privacy services for domain name registrations). The Respondent indeed confirms that it owns the Domain Name since 1 November 2016. The current expiration date of the Domain Name is 27 September 2017. \r\n\r\nThe Complainant submitted a screenshot of the website available at the Domain Name. This screenshot bears the date of 1 November 2016. This is the same date as the date the Respondent became the owner of the Domain Name. From this screenshot, it appears that this website only contained the following content: \"This domain may be for sale. Backorder this Domain.\" (with a link to the backorder, and a link to a privacy policy). According to the Complainant, the backorder redirected to the website where the Domain Name was offered for sale through a public auction. The contact details on the website are the same contact details as those of the Registrar (eNom, Inc.). \r\n\r\nOn 3 November 2016, the Complainant sent an email to the Respondent, indicating that it owned trademark rights in the name \"Lunchmail\" and that it would like to take over the Domain Name . On the same date, the Complainant received an email from a certain Jim York of Gio Media, offering the Domain Name and asking to take contact per email or telephone. On 7 November 2016, the Complainant responded by stating \"As trademark owners of Lunchmail we would indeed like to take over this domain name.\" The same day, Mr Jim York of Gio Media responded: \"Our price to sell this domain is $2,500 USD.\" Subsequent email correspondence was cited by the Complainant (but not submitted as attachments to the claim). From this correspondence, it seems that the Complainant refused to pay this amount and asked to know the current legal owner of the Domain Name. It furthermore seems that Mr Jim York refused to provide such information and informed the Complainant that the Domain Name had been sold to an anonymous purchaser.\r\n\r\nAccording to evidence submitted by the Respondent (declaration by Carolyn Mitchell, Director of Compliance for eNom, Inc, i.e., the registrar of the disputed Domain Name), the Respondent became the owner of the disputed Domain Name on 1 November 2016. This means that the Domain Name was owned by the Respondent at the time of the email correspondence referred to above (correspondence starting on 3 November 2016).\r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the disputed domain name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\n1. The Domain Name is identical to the EU trademark of the Complainant. \r\n\r\n2. The Respondent has no rights or legitimate interests in the Domain Name. The Complainant refers to the following circumstances: \r\n•\tDomain parking;\r\n•\tUse of privacy or proxy registration services;\r\n•\tInactive website;\r\n•\tNon use\/Passive holding.\r\n\r\n3. The Domain Name has been registered and is being used in bad faith. The Complainant referred to the following categories of issues:\r\n•\tUse of privacy or proxy registration services;\r\n•\tDeliberate provision of false\/misleading Whois data;\r\n•\tConstructive knowledge\/prior knowledge of potential rights;\r\n•\tBlocking registration;\r\n•\tAutomated registration;\r\n•\tSpeculation in domain names;\r\n•\tHolding domain name for purposes of selling, licensing or renting (offer to Complainant; offer to public);\r\n•\tSelling, licensing or renting was the primary purpose;\r\n•\tNon-use of the Domain Name;\r\n•\tOther: The selected categories above are difficult to justify without knowing who the actual domain owner is.\r\n\r\nIn its additional explanations, the Complainant mentioned that the Domain Name was offered for sale by the Respondent (directly or indirectly) for the price of 2.500 USD.\r\n\r\nRESPONDENT:\r\n\r\n1. As concerns the purported identicalness or confusing similarity of the Domain Name to the trademark of the Complainant: Complainant has merely checked a box stating that the Domain Name is “identical” but did not actively prove such assertion. Complainant has not proved that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. \r\n\r\n2. As concerns the Respondent's purported lack or rights or legitimate interests: \r\n\r\nThe Policy does not affirmatively require a respondent to demonstrate legitimate rights or interests. The overall burden of proof rests with the Complainant. The 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, the burden of proof shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. According to the Respondent in this particular case, the Complainant did not make a single argument that Respondent lacks legitimate rights or interests in the Domain Name. The Complainant has merely checked boxes stating that the following “categories of issues” are involved: “Domain parking”; “use of privacy or proxy registration services”; “inactive website”; and “non use\/Passive holding.” The Complainant is obligated to prove such assertion. Because the Complainant has failed to prove such assertion, the Complainant has not made a prima facie case that Respondent lacks rights or legitimate interests, and thus the burden of proof has not shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name.\r\n\r\nAs concerns the purported domain parking: According to the Respondent, the assertions of the Complainant are contradictory, in the sense that a parked domain does not constitute an inactive website, nor a form of non-use or passive holding. Respondent is not operating a parked page using the Domain Name. Complainant has not produced evidence that Respondent has engaged in domain parking. Even if Complainant had produced such evidence, such evidence would not demonstrate that Respondent lacks rights or legitimate interests, since click-through services are common business practices and constitute legitimate use of a domain name. \r\n\r\nAs concerns the purported use of a privacy or prosy registration service: The Respondent claims that the Respondent is not using a privacy or proxy service: while the Respondent happens to operate a proxy service, the Respondent is the registrant of the Domain Name.\r\n\r\nAs concerns the purported inactive website or non use or passive holding: An inactive website\/non use\/passive holding have no relevance in determining whether the Respondent lacks rights or legitimate interests in the Domain Name. If anything, an inactive website\/non use\/passive holding could establish that Respondent has not gained rights or legitimate interests in the Domain Name via use of the Domain Name.\r\n\r\n3. As concerns the purported bad faith at registration and use of the domain name: \r\n\r\nThe Respondent has no affiliation with, or knowledge of, one “Jim York” or one “Gio Media”. This concerns an unaffiliated third party who had no right to offer the Domain Name for sale to the Complainant. The Respondent has never had any correspondence with the Complainant. \r\n\r\nThe Respondent is not using a privacy service. While Respondent happens to operate a proxy service, Respondent is the registrant of the Domain Name. Thus, Complainant’s argument is not applicable and cannot lead to any finding of bad faith. Furthermore, the use of a privacy or proxy registration service is not in itself an indication of bad faith. \r\n\r\nThe Respondent, in registering the Domain Name, was motivated by an independent intent, unrelated to the Complainant.\r\n\r\nThe Respondent had no knowledge of the Complainant at the time it registered the Domain Name. The Complainant offers no facts, evidence, or case support that the Respondent, a United States company, would have had either actual or constructive knowledge of the Complainant at the time it registered the Domain Name. \r\n\r\n“Lunch Mail” is a descriptive term. The Complainant does not have exclusive, worldwide rights to the “Lunch Mail” term. The Complainant is not the only party using “Lunch Mail” in a trademark sense. \r\n\r\nThe Complainant did not provide evidence that Respondent is using the Domain Name for a free ride upon the rights of Complainant. \r\n\r\nThe Respondent registered the Domain Name on 1 November 2016. The Complaint was filed on 22 November 2016. It would be unreasonable to find bad faith use of the Domain Name by non use\/passive holding over such a short period of time.\r\n\r\n4. Reverse domain name hijacking\r\n\r\nThe Respondent requests that the Panel issue a decision of Reverse Domain Name Hijacking. \r\n\r\nThe Respondent mentions the following circumstances of Complainant's bad faith:\r\n(1) Complainant does not make one single argument that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; \r\n(2) Complainant does not make one single argument that Respondent lacks legitimate rights or interests in the Domain Name; \r\n(3) Complainant asserts that it is “difficult to justify” that Respondent registered and\/or is using the Domain Name in bad faith; \r\n(4) Complainant checked a box stating that “domain parking” is involved in this matter, but Complainant does not furnish any evidence of Respondent’s domain parking; \r\n(5) Complainant attempts to argue bad faith based on the alleged actions of (i) the registrar of the domain name, and (ii) “Mr. York,” where Complainant must show bad faith on the part of Respondent; \r\n(6) Complainant checked a box stating that “constructive knowledge\/prior knowledge of potential rights” is involved in this matter, but Complainant offers no facts, evidence, or case support that Respondent, a United States company, would have had either actual or constructive knowledge of Complainant at the time it registered the Domain Name; \r\n(7) Complainant checked a box stating that “use of privacy or proxy registration services” is involved in this matter, but that is obviously not the case; \r\n(8) Complainant checked a box stating that “deliberate provision of false\/misleading Whois data” is involved in this matter, but that is obviously not the case; \r\n(9) Complainant checked a box stating that “speculation in domain names” is involved in this matter, but Complainant offers no facts or evidence that that is the case; and \r\n(10) Complainant checked a box stating that “holding domain name for purposes of selling, licensing or renting...to Complainant” is in involved in this matter, but that is not the case.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the 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).", "no_rights_or_legitimate_interests": "The Complainant has not, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).", "bad_faith": "The Complainant has not, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).", "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": [ "Bart Van Besien" ], "date_of_panel_decision": "2017-01-03 00:00:00", "informal_english_translation": "The Complainant is the registered owner of the EU trademark “Lunchmail” No. 8274193 (word mark; registration date: 12 January 2010; application date: 30 April 2009; classes 35, 38, 42).", "decision_domains": { "LUNCHMAIL.COM": "REJECTED" }, "panelist": null, "panellists_text": null }