Metamark (UK) Limited v. Andrew Longton / Metamark Corportation
Claim Number: FA1909001864151
Complainant is Metamark (UK) Limited (“Complainant”), represented by Matt Enright, United Kingdom. Respondent is Andrew Longton / Metamark Corportation (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metamark.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2019; the Forum received payment on September 26, 2019.
On September 26, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <metamark.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on October 4, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant made the following contentions.
Complainant trades under the <metamark.co.uk> domain name and under the METAGLIDE mark in order to sell colored and specialty sign vinyl. Complainant has rights in the METAGLIDE mark through its trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. UK00003321173, registered Jun. 28, 2018). See Amend. Compl. Annex 4. Complainant makes no arguments under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <metamark.com> domain name. Respondent has refused to resolve this matter with Complainant and has attempted to sell the domain name through the Tucows registrar.
Respondent registered and uses the <metamark.com> domain name in bad faith. Respondent attempts to sell the disputed domain name. Respondent is not using the domain name for a trade or active website, has no legal or trademark claim for the name “Metamark,” and is only being held for future profit or financial gain.
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom company that sells colored and specialty sign vinyl.
2. Complainant has established its trademark rights in the METAGLIDE mark through its trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. UK00003321173, registered Jun. 28, 2018).
3. Respondent registered the <metamark.com> domain name on April 3, 1997.
4. There is no evidence to suggest that the domain name is identical or confusingly similar to the METAGLIDE trademark.
5. There is no evidence to suggest that Respondent has no rights or legitimate interests in the domain name.
6. There is no evidence to suggest that Respondent registered and has used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the METAGLIDE mark based upon registration of the mark with the UKIPO (e.g., Reg. No. UK00003321173, registered Jun. 28, 2018). See Amend. Compl. Annex 4. Registration of a mark with the UKIPO is sufficient to establish rights in that mark. See Bittrex, Inc. v. Protection of Private Person, FA 1775280 (Forum Apr. 20, 2018) (“Since Complainant evidences its registration of the trademark with UKIPO the Panel finds that it has shown trademark rights.”). The Panel therefore holds that Complainant’s registration of the METAGLIDE mark with the UKIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s METAGLIDE mark. It is clearly not identical. Complainant has made no arguments that Respondent’s <metamark.com> domain name is confusingly similar to the METAGLIDE mark or why that should be so. It is now well established that the answer to that question must be given by making a straight comparison between the domain name and the trademark. The domain name is <metamark.com> and the trademark is METAGLIDE. When they are put together it could be said that the domain name is similar to some extent to the trademark as they both contain the expression ‘meta’. However, are they confusingly so? The Panel is of the view that they are not. An observer would not necessarily conclude that the domain name is referring to or invoking the trademark. It may well be referring to something entirely different from the trademark. Moreover, ‘meta’ is a generic expression and the meaning of the generic expression ‘meta’ in the domain name is probably not referring to or invoking the generic expression ‘meta’ in the trademark.
The Panel therefore finds that the <metamark.com> domain name is not identical or confusingly similar to the METAGLIDE mark per Policy ¶ 4(a)(i).
Complainant has thus not made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant has not made out any such prima facie case. Complainant makes no cognizable arguments under Policy ¶ 4(c)(ii). It simply submits that “Offers have been made to buy the domain name via TUCOWs and its affiliated companies”. Presumably the owner o the domain name, the Respondent, has declined to discuss the sale of the domain name. That is not a ground for concluding that Respondent has no right to register the domain name or legitimate interest in it. It merely indicates that Respondent is not prepared to sell it.
No evidence has been adduced or reason shown as to how it is made out that Respondent has no rights or legitimate interests in the domain name.
Complainant has thus failed to make out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles and the whole of the evidence, the Panel finds that the disputed domain name was not registered and used in bad faith. The Respondent’s case is simply: “Not a trading or active site. -No legal or trademarked claim on the name of Metamark- Solely being held for a future profit or financial gain.” None of that amounts to evidence or a reason why the domain name was registered and used in bad faith.
Moreover, there is another insurmountable obstacle in the way of the Respondent on this issue. The domain name was registered on April 3, 1997, and the trademark was not registered until June 28, 2018, 21 years later. On the evidence, therefore, the Respondent held the domain name for 21 years before the Complainant made the present claim. That being so, no panel would be prepared to disturb the Respondents’ ownership of the domain name in the absence of strong evidence that the Respondent has acted in bad faith. That evidence has not been brought forward.
The Panel therefore has no alternative but to deny the Complainant’s claim for want of evidence.
Complainant has thus not made out the third of the three elements that it must establish.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <metamark.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Dated: October 30, 2019
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