Complaint for AngelCare.com denied at WIPO – Panel admits that content of parked websites is automatically generated

At WIPO the complaint for the domain name AngelCare.com was denied while the Panel admitted in the decision that content of parked websites is in general automatically generated. The Panel didn’t accept Complainant’s accusations of Respondent cyberflying.

The complaint was filed with the WIPO Arbitration and Mediation Center on June 14, 2012 for the domain name angelcare.com. The Complainant was Les Développements Angelcare Inc. from Québec, Canada and the Respondent was Radio plus, spol.s r.o. from Praha, Czech Republic.

The decision was delayed for 3 months (decision is dated Dated: September 10, 2012) because of various factors.

First of all, Respondent transfered the domain name before the filling of the complaint to a new registrar. Respondent stated that the transfer to the new registrar happened because it received suspicious emails some days before the receipt of the Complaint and chose to transfer the disputed domain name to its own jurisdiction to defend it if a UDRP proceeding should be lost. The old registrar was located at China while the current registrar is located in the Czech Republic. This did not have much effect on the delay but during transfer the name of the Registrant changed.

After the transfer to the new registrar was completed whois privacy was removed from the disputed domain name so the real name of the Registrant was revealed and also the new registrar informed the Center that the language of the registration agreement was Czech. So Complainant had to amend the Complaint in order to reflect the correct name of the Respondent and also translate the Complaint in Czech as Respondent chose to have these proceedings in the Czech language. So the proceedings were conducted in English.

The Complainant filed an amended Complaint on June 27, 2012 and a translated Complaint on July 3, 2012. The due date for Response was July 24, 2012. The Response was filed on July 24, 2012 in English because Respondent complained about the poor quality of the Czech translation of the Complaint.

The Center appointed Brigitte Joppich, Ladislav Jakl and The Hon Neil Brown Q.C. as panelists in this matter on August 16, 2012. A three member panel always takes longer to be appointed as Complainant and Respondent have to submit their panelist preferences. The decision doesn’t state which party asked for the 3-member panel but usually it is the Respondent that asks for it.

Finally, on August 27, 2012, the Panel issued Procedural Order No. 1 to the parties, requesting the Respondent to provide evidence that it registered the disputed domain name in 1999 and has owned it ever since. The Respondent filed a reply to Procedural Order No. 1 on August 31, 2012. The Complainant replied to the Respondent’s submission on September 5, 2012.

The Complainant is the registered owner of numerous trademark registrations for ANGEL CARE, inter alia Canadian trademark registration no. TMA519,974 ANGEL CARE, applied for on April 9, 1998 and registered on November 29, 1999. Complainant  registered the domain name angelcare-monitor.com on September 14, 1999.

The disputed domain name was first registered on February 15, 1999, (i.e. months before the trademark registration or Complainant’s domain name registration) and is used in connection with a parking website with links to various products, including links to products offered by some of the Complainant’s direct competitors.

Cyberflying

Complainant claimed that the Respondent was engaged in “cyberflight,”, i.e. attempted to avoid or delay an imminent administrative proceeding by changing details of the WhoIs data of the disputed domain name after notice that a complaint was filed. Such an action would contravene paragraph 8(a) of the Policy, which prohibits a respondent from transferring a domain name registration during a pending administrative proceeding.

I don’t understand how this could happen as a Registrar, upon receipt of a complaint, is obligated to lock the domain name so that there is no Registrant change and no Registrar transfer. If this had happened it would have been the Registrar’s fault. But the Registrar transfer actually happened before the notice of the complaint.

The Panel found that this is no case of “cyberflying”, as the Respondent did not change the WhoIs data in terms of changing ownership but only changed its registrar and took down the privacy protection. The Respondent’s actions did not avoid or delay the present proceedings. Consequently, the Panel treated Radio plus, spol.s r.o. as the sole Respondent in this case and did not consider the prior registrant, ANGELCARE.COM Privacy Protect, as an additional respondent.

Decision

The Panel found that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. (Identical or Confusingly Similar) The Panel stated that the disputed domain name fully incorporated the Complainant’s ANGEL CARE Marks and was identical to such marks. It said that it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.

In the light of the Panel’s finding below it was not necessary for the Panel to come to a decision in the Rights or Legitimate Interests element of the UDRP.

With regard to the bad faith registration element, the Panel found that the Complainant did not provided sufficient evidence with regard to the Respondent’s actual knowledge of the Complainant and its trademark rights at the moment of time the disputed domain name was first registered and that, therefore, the Complainant failed to meet its burden of proof in this regard.

The Panel said that Complainant’s main argument in this regard – i.e. that the website available at the disputed domain name shows advertising from the Complainant’s competitors and that it is a reasonable inference from such content that the Respondents knew of the Complainant’s business and wanted to exploit its trademark to divert Internet traffic – was not sufficient in this case to prove bad faith registration. The Complainant only provided evidence with regard to the actual use of the disputed domain name on June 7, 2012 but no evidence at all with regard to the use of the disputed domain name prior to this date. With this in mind, and noting that the content of parked websites is in general automatically generated, the Panel finds it hard to draw inferences from the actual content of the website available at the disputed domain name with regard to the bad faith registration element.

Furthermore, Panel said that although the Complainant contends that it started selling its products in 1997 and claims first use in commerce in the United States of America in 1998, it first registered a domain name to offer its products online only on September 14, 1999, i.e. seven months after the registration of the disputed domain name. Furthermore, although the Complainant’s first trademark was applied for on April 9, 1998, i.e. before the registration of the disputed domain name, it was registered only afterwards, i.e. on November 29, 1999.

Based on the facts and evidence provided by the Complainant, the Panel could not conclude that the Respondent must have necessarily been aware of the Complainant when the disputed domain name was registered. In this regard, the Panel especially took into account that the Respondent is located in Europe (Czech Republic), that the second level of the disputed domain name is not highly distinctive, that the Complainant itself started offering its products online only after the registration of the disputed domain name and that the Respondent (even if this Panel would be prepared to impose such an obligation on the Respondent in this case) most likely could only have become aware of the Complainant’s then-application for a trademark by searching the Canadian Intellectual Property Office database for trademarks before registering the disputed domain name.

Consequently, the Panel concluded that the third element of the Policy was not met and that the Complaint must be denied.

The Respondent requested a finding of reverse domain name hijacking. The Panel said that In the present case, where the Complainant had at least been doing business under a name identical to the second level domain name before the registration of the disputed domain name, where the content available at the Respondent’s website at the disputed domain name might constitute an infringement of the Complainant’s trademark rights and where the Complainant seems to believe in its rights in the disputed domain name in good faith, the Panel found that the Complainant’s filing as such was not an abuse of the Policy.