WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elixoo GmbH, and Edda Nowak v. Withheld for Privacy ehf / Taylor Pope, Elixoo LTD / Taylor Taylor, Elixoo LTD, Elixoo.org
Case No. D2021-2772
1. The Parties
The Complainants are Elixoo GmbH, Germany, and Edda Nowak, Germany, represented by SBS Legal Rechtsanwälte Schulenberg & Partner, Germany.
The Respondent is Withheld for Privacy ehf, Iceland, / Taylor Pope, Elixoo LTD, United Kingdom (“UK”) / Taylor Taylor, Elixoo LTD, Elixoo.org, UK.
2. The Domain Names and Registrar
The disputed domain names <elixoo.app>, <elixoo.biz>, <elixoo.co>, <elixoo.exchange>, <elixoo.network>, <elixoo.online>, and <elixoo.org> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 24, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint;
(c) confirming that the language of the registration agreements was English; and
(d) confirming that the disputed domain names were registered on October 12, 2020.
The Center sent an email communication to the Complainants on August 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 26, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 27, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The second-named Complainant, Edda Nowak, is the chief executive officer of the first-named Complainant, Elixoo GmbH, and the owner of the registered trademark ELIXOO discussed below.
On July 29, 2020, the Complainants registered the domain name <elixoo.com>.
On August 20, 2020, the first-named Complainant commenced offering for sale cosmetic products and nutritional supplements under the name ELIXOO from the website to which the domain name <elixoo.com> resolved.
As noted above, on October 12, 2020, the Respondent(s) registered the disputed domain names.
The disputed domain name <elixoo.org> has resolved to a website which contains material which the Complainants contend is false and defamatory of Mr. Dennis Nowak, the founder of the first-named Complainant and husband of the second-named Complainant. The other disputed domain names apparently have not resolved to any website.
On January 20, 2021, the second-named Complainant applied to register ELIXOO as a trademark in the European Union in respect of goods and services in International Classes 3, 5, 25, 32, and 35. On May 27, 2021, Ms. Nowak’s ELIXOO trademark application was registered, European Union Trademark (“EUTM”) registration no. 018377438.
On June 13, 2021, the Complainants’ lawyers sent a cease and desist letter to the operator of the disputed domain name <elixoo.org> at the address provided on the website to which the disputed domain name resolved.
On June 22, 2021, the Complainants’ lawyers received an email in reply to their cease and desist letter. The email stated the sender was not just the holder of the disputed domain name <elixoo.org> but of the other disputed domain names also. The email further stated that the sender had lost 10 Bitcoin through investments “in various systems” with Mr. Nowak. The email concluded by offering to sell all the disputed domain names to Mr. Nowak for 10 Bitcoin.
On June 28, 2021, the Respondent Elixoo Ltd was incorporated as a private company in the United Kingdom. The Respondent Taylor Pope is its sole director.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Center has discharged its obligations under the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent(s) has been given a fair opportunity to present his or its case. The Panel notes also that the email on June 22, 2021, responding to the Complainant’s cease and desist letter and asking for compensation was sent from the email account which the Registrar has confirmed is the email address for the Registrant, Administrative, Technical and Billing Contacts for the disputed domain name <elixoo.org>.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As Ms. Nowak, the owner of the EUTM No. 018377438, is also the chief executive officer of the first-named Complainant and the first-named Complainant is the party actually exploiting the trademark, the Panel considers it appropriate for both to be parties to the dispute.
All the disputed domain names consist solely of the Complainants’ trademark and a generic Top-Level-Domain (“gTLD”).
Disregarding the privacy service, there are nominally three Respondents: Elixoo Ltd, Mr. Pope and apparently one “Taylor Taylor”. The address information for “Taylor Taylor” recorded in the WhoIs records provided by the Registrar, however, is the same as the information for Mr. Taylor Pope and the corporate Respondent. Mr. Taylor Pope is also the sole director of the corporate Respondent. Furthermore, the unsigned email in reply to the cease and desist letter identified the sender as the “owner” of all disputed domain names.
In these circumstances, it appears likely that Taylor Pope and Taylor Taylor are the same person. If they are different persons, however, they appear to be working together. For example, the unsigned email in reply to the cease and desist letter stated that the sender intended to put the other, as yet unused disputed domain names to the same use as the disputed domain name <elixoo.org>.
Accordingly, the Panel considers it appropriate that the Complaints against all Respondents be consolidated into the one proceeding. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 and 4.11.2.
The correspondence between the parties prior to filing of the Complaint was in German as was the website to which the disputed domain name <elixoo.org> resolved.
The language of the registration agreement is English. The Complaint has also been submitted in English. The Respondents (other than the privacy service) are all located in London in the United Kingdom, where English is the common language. None of the Respondents have requested that the proceeding be conducted in a language other than English.
In these circumstances, the Panel considers it appropriate that English is the language of the proceeding in accordance with the Rules paragraph 11.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainants have proven ownership of the EUTM for ELIXOO.
They also claim common law rights in ELIXOO. While they have indicated when the first-named Complainant commenced using the trademark, the Complaint does not include other information of the kind usually required to establish a claim to rights in an unregistered trademark under the Policy. See e.g., WIPO Overview 3.0, section 1.3. Accordingly, the Panel is not prepared to find the claim to common law rights has been sustained.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
While the Complainants’ trademark was registered after the disputed domain names, that fact is not determinative at this stage of the inquiry and is better considered in relation to the second and third requirements. See e.g., WIPO Overview 3.0, section 1.1.3.
Disregarding the gTLD, each of the disputed domain names consists solely of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that each disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainants state that they have not authorised the Respondents to use the disputed domain names. Nor are the Respondents affiliated with them.
The disputed domain names are plainly not derived from the individual Respondents’ names. Nor is there any suggestion of some other name by which the individual Respondents are commonly known from which the disputed domain names could be derived.
The disputed domain names (disregarding the gTLD component) are the same as the corporate Respondent’s name (disregarding the corporation identifier). However, the corporate Respondent was incorporated only after the cease and desist letter from the Complainants’ lawyers and about eight months after the individual Respondent(s) registered the disputed domain names. The incorporation of the corporate Respondent under that name, therefore, cannot be used to justify the registration of the disputed domain names.
The Respondents’ email on June 22, 2021, seeks to suggest that the disputed domain names were registered as some form of criticism or “whistleblower” site. The content of the website to which the disputed domain name <elixoo.org> resolves provides some support for that claim.
In the present case, however, the Panel is not satisfied that the disputed domain names are being used for a legitimate noncommercial or fair use.
First, it has been recognised that a general right of legitimate criticism under the Policy does not necessarily extend to registering a domain name identical to the Complainants’ trademark. See e.g., WIPO Overview 3.0, section 2.6.2.
Secondly, the content of the website to which the <elixoo.org> disputed domain name resolves (in the translation provided by the Complainants) does not appear to relate to the Complainants or the ELIXOO business. Rather, it appears to relate to conduct Mr. Nowak is alleged to have engaged in prior to the ELIXOO business.
The Complainants contend that the content is false and defamatory. The Panel is not in a position to assess or comment on the truth or falsity of the allegations. Arguably, a website disclosing warning information about prior conduct of an individual closely involved in a business might possibly support a claim to legitimate noncommercial or fair use as a criticism site. At the very least, however, considerable caution would be required before accepting a claim to a right or legitimate interests under the Policy for such indirect use especially where the disputed domain names are identical to the Complainants’ trademark.
Thirdly, the Respondents’ June 22, 2021, email advancing the claimed justification does not appear to be consistent with the claimed justification. First, the email claims that the sender has lost 10 Bitcoin investing with Mr. Nowak “in various systems”. Neither the email nor any Response in this proceeding (the latter because one has not been filed) provides any objective materials to corroborate the claimed loss. The claim is just a bald allegation.
In addition, the content of the website which the <elixoo.org> disputed domain name resolved to purports to be by someone who is considering investing in the first-named Complainant’s business and reports on the results of Google searches that the prospective investor undertook. There is no suggestion that the author had already invested and lost money in dealings with Mr. Nowak or the Complainants.
Further and significantly, the email offers to transfer all disputed domain names to the Complainants for 10 Bitcoin. That offer could be seen as indicating the real reason for registering the disputed domain names was to seek a substantial payment far in excess of likely out of pocket costs for the registrations. See e.g., paragraph 4(b)(i) of the Policy. At the least, it indicates that the Respondents really registered the disputed domain names as bargaining chips in connection with a business dispute with the Complainants or someone closely associated with them. In the Panel’s view, that purpose does not qualify as a legitimate noncommercial or fair use under the Policy.
Taking all those considerations together as a whole, therefore, the Panel does not consider the Respondents could make out a claim of rights or legitimate interests in the disputed domain names as a form of criticism site or otherwise as a legitimate noncommercial or fair use.
The Panel notes that six of the seven disputed domain names have not been used at all and cannot be in any better position than the <elixoo.org> disputed domain name.
As a result, the Panel considers that the Complainants have established a prima facie case under the Policy that the Respondents have no rights or legitimate interests in the disputed domain names, which the Respondents have not rebutted. Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, there can be little doubt that the Respondents have registered the disputed domain names with knowledge of the Complainants’ trademark.
First, “elixoo” is (so far as the record in this case shows) an invented or coined term which is not descriptive of anything. It has significance only as the Complainants’ trademark.
Secondly, there is nothing in the record to indicate any use of or association with the term “elixoo” by the Respondents prior to its adoption by the Complainants.
Thirdly, the Respondents’ email of June 22, 2021 indicates quite strongly that the Respondents registered the disputed domain names with the Complainants and their trademark in mind.
Fourthly, while the Complainants’ trademark was both filed and registered after the Respondents registered the disputed domain names, that does not exclude bad faith where, as appears to be the case here, the Respondents registered the disputed domain names with knowledge that ELIXOO was being used by the Complainants as the name and trademark of their business. See e.g., WIPO Overview 3.0, section 3.8.2
Accordingly, it appears that the Respondents registered the disputed domain names because of their resemblance to the Complainants’ trademark. Registering domain names to capitalise on their significance as someone else’s trademark, without the permission of the trademark owner, constitutes registration in bad faith.
The use of the disputed domain names to seek payment of 10 Bitcoin is likely seeking far in excess of the out of pocket costs in registering the disputed domain names and, consequently, where that is done without a right or legitimate interest in the disputed domain names use in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <elixoo.app>, <elixoo.biz>, <elixoo.co>, <elixoo.exchange>, <elixoo.network>, <elixoo.online>, and <elixoo.org>, be transferred to the Complainants.
Warwick A. Rothnie
Date: October 11, 2021