In the UDRP matter of Georg Mez AG v. Mez Kalra [Case No. D2016-1932], the Complainant Mr Georg Mez AG of Rotkreuz, Switzerland supplies industrial products relating to duct systems. He owns various registered trade marks for “MEZ” in various countries like Germany, USA and also in India.
While the Respondent is Mr Mez Kalra of Nashik, India. The disputed domain name was registered with BigRock Solutions Pvt Ltd having registration date to way back in 1996 The said domain name was acquired by Mr Aishwin Vikhona in April 2015 from Mr William Mezian
In Feb 2016, complainant’s lawyer had contacted the previous owner Mr Aishwin Vikhona asserting that Complainant owner TM in the word and Mr Aishwin Vikhona had no rights in the same and offered $600 for the same. During the same time, the website page represented content and links related to Hungarian Honey.
The Complainant asserted his Trademark rights and also alleged that the Respondent had no right legitimate interest in the Domain Name and the Domain Name is being used on bad faith. The Domain Name was used by Mr Aishwin Vikhona and later was transferred to the Respondent Mr Mez Kalra. And there is no website at the disputed domain name.
The Respondent’s response provided as follows:
1) The Respondent’s business partner and cousin Aishwin Vikhona bought the disputed domain name on April 13, 2015. On February 24, 2016, the Respondent and his cousin formed a partnership to manage the disputed domain name.
2) At various times thereafter the Whois was modified to reflect the names of a company owned by Aishwin Vikhona (Global Websoft) and one owned by the Respondent (Zen Infotech).
3) The disputed domain name was previously used for a website for links related to honey because “mez” means honey in Hungarian and a contractor offered to pay the Respondent for leads. The Respondent terminated the honey related website after the contractor became non-responsive.
4) Most recently the Respondent moved the disputed domain name to a new registrar after becoming a majority owner of the disputed domain name and he modified the register to reflect his email address.
5) The Respondent bought the disputed domain name because it was an inherently valuable three-letter domain name and not to target the Complainant.
6) The Respondent was unaware of the Complainant or its trade mark at the time of acquisition of the disputed domain name in April 2015.
7) The Respondent and Mr. Vikhona collectively own many three-letter domain names, which have diverse commercial uses and are not exclusively owned by any one company. As the Respondent also invests in domain names, its ownership of the disputed domain name, with intent to resell, itself satisfies the legitimate interest requirement of the Policy as there is no evidence that the Respondent targeted a trade mark.
8) There are limitless potential uses of the term “MEZ”, which is a common acronym. A Google search for the term yielded some 27 million results. The fact that “MEZ” is a three-letter combination and used by many third parties, including as a common acronym for entities unrelated to the Complainant, is evidence that the Complainant has no exclusive rights in the term and this supports the Respondent’s legitimate interest in the disputed domain name. Because of the substantial third party use of the term “MEZ”, the Complainant must produce specific evidence of the Respondent’s bad faith but has failed to do so.
9) There have never been any links on the website relating to the Complainant.
10) There is no evidence that the Complainant operates a well-known brand.
11) The Respondent’s use as a lead generation site for “honey”, consistent with the definition of “honey” in Hungarian, is evidence of legitimate use.
13) The disputed domain name reflects a common term and the Complainant has not established that the Respondent intended to create a likelihood of confusion vis-à-vis the Complainant. Such a claim is bound to fail because of the Respondent’s legitimate non-infringing use of the site for honey. There is no likelihood of confusion with the Complainant’s metal products.
14) The lack of advertisements targeting the Complainant’s goods or services indicated that the Respondent did not intend to confuse Internet users into thinking that the Complainant was associated with the Respondent’s website.
15) The Complainant took no action against the original owner of the disputed domain name, registered in 1996, for over two decades and only decided to pursue the disputed domain name in February 2016. However, the Complainant effectively concedes there is no evidence of targeting or bad faith use of the disputed domain name. The best that the Complainant can claim is that the disputed domain name was “resold”. The Complainant has therefore failed to prove bad faith.
16) There should be a finding of Reverse Domain Name Hijacking. Before filing the Complaint, the Complainant knew that its claim was baseless. The Complainant remained silent for over two decades and then engineered this case after the Respondent purchased the disputed domain name from its owner and declined to accept the Complainant’s unsolicited offer to buy the disputed domain name. This is a clear “Plan B” case to seize a valuable three-letter domain name. The lack of bad faith should have been apparent to the Complainant’s counsel. The fact that the Complaint provides no evidence of the Respondent’s wrongdoing is itself proof of the Complainant’s bad faith.
Supplement Filings of the parties were not entertained.
Now, to be a successful in a Domain Name Disputes all the three Domain Name Disputes conditions need to be satisfied:
(i) Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Domain name has been registered and is being used in bad faith.
Undoubtedly, Complaint owning the Trademark over ‘MEZ’ satisfies the first condition. The Panel therefore concluded the Complainant has established the first element of paragraph 4(a) of the Policy. While it said it is unnecessary to consider the second element as to Respondent’s Rights and legitimate interest in light of the Panel’s conclusion below under the third element – ‘Bad Faith’.
In the Panel’s view, the Complainant has fallen well short of establishing registration and use in bad faith.
There is no evidence that the Respondent knew or was likely to have been aware of the Complainant’s mark on acquisition of the disputed domain name on April 7, 2015.
1) There is no evidence that the Respondent knew or was likely to have been aware of the Complainant’s mark on acquisition of the disputed domain name on April 7, 2015. The Panel rejects the Complainant’s assertion in its supplemental filing that the Complainant’s legal letter of February 2, 2016, alone was sufficient to create relevant knowledge of its rights on the part of subsequent registrants of the disputed domain name.
2) The Complainant has provided no information, let alone supporting evidence, regarding the nature or scale of its activities or extent of its reputation, if any, in April 2015 – or at indeed at any other time. And there is nothing suggestive of use by the Respondent of the disputed domain name in a manner related to the Complainant’s specialised industry.
3) While the Complainant has criticized the alleged lack of genuineness of the Respondent’s former use of the disputed domain name for a honey-related website, the Panel does not consider that such criticism, whether or not justified, assists the Complainant in establishing that the Respondent acted in bad faith vis-à-vis the Complainant.
4) The Respondent has established that, as one might expect, the term “MEZ” is in widespread use, particularly as an acronym and that the disputed domain name is part of a pattern of similar three-letter domain names owned by it.
The Panel therefore concludes the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
Reverse Domain Name Hijacking (RDNH)
The Respondent argues that the Complainant has been guilty of RDNH.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel considers that the Complainant has been guilty of RDNH for the following reasons:
1. The Complainant has failed by a large margin. In the Panel’s opinion, the Complainant knew, or at least should have known, that it could not prove one of the essential UDRP elements. Indeed, the Complainant made no real effort to establish that the Respondent was likely to have been aware of it on acquisition of the disputed domain name, including the lack of any information or evidence about the Complainant’s trading activities. Indeed, there was virtually no evidence at all relating to bad faith; for example the Complainant supplied no screenshots illustrating the use of the disputed domain name which the Complainant invoked. (This information only emerged in later submissions.). Instead, the Complainant resorted to some vague and unpersuasive arguments, none of which were directed to the likelihood that the Respondent was aware of the Complainant, and which appeared to rest on the basis that the Complainant had an exclusive right to the disputed domain name.
2. The Complaint lacked candour in that it made no mention of the prior communications between the parties including its initial offer to purchase the disputed domain name.
3. In the Panel’s view, this is a classic “Plan B” case where a party, having been frustrated in its negotiations to buy a domain name, resorts to the ultimate option of a highly contrived and artificial claim not supported by any facts or the plain wording of the UDRP. This stratagem has been described in many UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 and BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D20161811.
4. The Complainant in its supplemental filing expressly declined to respond to the Respondent’s assertion of RDNH. The Complainant submitted simply that “Statements in relation to Reverse Domain Name Hijacking are not required”. In the context of this proceeding, statements in relation to RDNH were certainly required and it is not unreasonable to expect that they would have been provided. If so, they would certainly have been admitted. When a panel finds that a party will not engage in debate on a particular issue, it is entitled to conclude that the party’s case on the issue in question has some inherent deficiencies.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.