Spritzer bottled water Reverse Domain Name Hijacking

8/12/2019 Spritzer bottled water Reverse Domain Name Hijacking

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ARBITRATIONANDMEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc.

Case o. !"#$%&#''

1. The Parties

he Com*lainant is Chuan Sin Sdn. Bhd. of ai*ing, Pera+, ala-sia, re*resented b- IP irror Pte td,

Singa*ore.

he Res*ondent is Internet Admin (not for sale), Reflex Publishing Inc. of am*a, /lorida,

0nited States of America (10S2), re*resented b- 3ohn Berr-hill, Ph.d 4s5., 0S.

2. The Domain Name and Registrar

he dis*uted domain name 6s*rit7er.com8 (the 1!is*uted !omain ame2) is registered 9ith oni+er :nline

Services, C (the 1Registrar2).

. Pro!ed"ra# $istor%

he Com*laint 9as filed 9ith the ;IP: Arbitration and ediation Center (the 1Center2) on A*ril , "#$%.

:n A*ril , "#$%, the Center transmitted b- email to the Registrar a re5uest for registrar verification in

connection 9ith the !is*uted !omain ame. :n A*ril <, "#$%, the Registrar transmitted b- email to the

Center its verification res*onse confirming that the Res*ondent is listed as the registrant and *roviding the

contact details. :n A*ril <, "#$%, the Center received an informal communication from the Res*ondent.

he Center verified that the Com*laint satisfied the formal re5uirements of the 0niform !omain ame

!is*ute Resolution Polic- (the 1Polic-2 or 10!RP2), the Rules for 0niform !omain ame !is*ute Resolution

Polic- (the 1Rules2), and the ;IP: Su**lemental Rules for 0niform !omain ame !is*ute Resolution Polic-

(the 1Su**lemental Rules2).

In accordance 9ith the Rules, *aragra*hs "(a) and %(a), the Center formall- notified the Res*ondent of the

Com*laint, and the *roceedings commenced A*ril $=, "#$%. In accordance 9ith the Rules, *aragra*h '(a),

the due date for Res*onse 9as a- =, "#$%. he Res*onse 9as filed 9ith the Center on a- =, "#$%.

he Center a**ointed 3ohn S9inson, S-ed a5i7 Shahabuddin and on- ;illoughb- as Panelists in this

matter on a- "$, "#$%. he Panel finds that it 9as *ro*erl- constituted. 4ach member of the Panel hassubmitted the Statement of Acce*tance and !eclaration of Im*artialit- and Inde*endence, as re5uired b- the



*age "

Center to ensure com*liance 9ith the Rules, *aragra*h .

&. 'a!t"a# Ba!(gro"nd

he Com*lainant is Chuan Sin Sdn. Bhd., a ala-sia&based com*an- incor*orated since $<.

he Com*lainant is the largest bottled 9ater *roducer in ala-sia.

he Com*lainant o9ns the follo9ing registered trade mar+s for SPRI>4R?

& ala-sia Registration o. @@#@=<, registered August , $<@@ and

& Brunei !arussalan Registration o. "#%"@, registered ovember "$, $<<%, (collectivel-, the 1rade ar+2).

he Com*lainant o9ns numerous other trademar+s for SPRI>4R in various Asian countries. All of these

registrations *ost&date the registration of the !is*uted !omain ame.

he Res*ondent is Reflex Publishing Inc. of the 0S. he Res*ondent is in the business of registering

generic and descri*tive terms as domain names.

he Res*ondent registered the !is*uted !omain ame on Se*tember "@, $<<@.

he !is*uted !omain ame currentl- resolves to 6c-berfinder.com8 and dis*la-s lin+s to various 9ebsites.

he lin+s are general in nature, and a**ear to be unrelated to the Com*lainantDs *roducts

(e.g. 1Real 4state2, 1Refinance2, 1/itness2, 1Eome !ecorating2).

). Parties* Contentions

A. Com+#ainant

he Com*lainant ma+es the follo9ing submissions?

Identical or Confusingl- Similar

he !is*uted !omain ame is identical to the rade ar+.

Rights or egitimate Interests

he Res*ondent is not commonl- +no9n b- the !is*uted !omain ame and does not o9n an- trade mar+s

of the same name.

Registered and 0sed in Bad /aith

he Res*ondent has acted in bad faith for the follo9ing reasons?

& it 9as a9are of the *o*ularit- of the rade ar+ and registered the !is*uted !omain ame to ex*loit the

rade ar+

& it registered the !is*uted !omain ame to sto* the Com*lainant reflecting its rade ar+ in a

corres*onding domain name and

& it registered the !is*uted !omain ame to disru*t the Com*lainantDs business.

he Com*lainant submits that the registration of !is*uted !omain ame has diluted its brand. It further

submits that the lin+s to 1irrelevant *roducts and services2 dis*la-ed on the 9ebsite at the !is*uted !omain

ame have diluted its brand.

!ela-



*age

he Com*lainant *rovided the follo9ing Fustification for its dela- in bringing an action? 1As the Internet

evolves to be an im*ortant *art of an- business, the Com*lainant is more a9are of the ris+ and infringement

ha**ening on the internet G As the Com*lainant runs a traditional business for man- -ears and not an

ex*ert in the online 9orld, it is no9 ta+ing more *roactive action to safeguard and *rotect its brand online.2

B. Res+ondent

he Res*ondent ma+es the follo9ing submissions?

on&disclosure

he Com*lainant did not disclose its failure to secure trademar+ registration for 1SPRI>4R2 in the 0S

(9hich is the 0!RP utual 3urisdiction, and is also 9here both the Res*ondent and the Registrar are

located). he Com*lainantDs trademar+ registration a**lication 9as filed in :ctober "#$", and 9as finall-

refused in 3anuar- "#$%. (he Res*ondent *rovided a detailed chronolog- of the refusal *rocess. he final

ground for refusal 9as that the SPRI>4R mar+ 9as dece*tivel- misdescri*tive.) his failure to disclose

information is a material omission (see Dynamis Limited v. Alice Stephen Uppal , ;IP: Case

o. !"#$&"$$@).

Identical or Confusingl- Similar

A 1s*rit7er2 is 1an- variet- of beverages consisting of an alcoholic beverage into 9hich carbonated 9ater has

been added2. It is unli+el- that Asian trade mar+ authorities 9ould have been a9are of this definition.

/urther, onl- t9o trade mar+ registrations, being ala-sia and Brunei !arussalam, *re&date the registration

of the !is*uted !omain ame, and alcohol is illegal in Brunei !arussalam (as such, a trade mar+ office cler+

in that countr- 9ould be unli+el- to have heard of a 1s*rit7er2).

Rights or egitimate Interests

he Res*ondent submits that it has rights in the 0S Furisdiction (9hich is also the 0!RP utual 3urisdiction).

he Res*ondent submits that the Panel should a**l- 0S la9 to this Com*laint, and em*hasi7es that the

Com*lainantDs trade mar+ has been refused legal recognition in this Furisdiction.

he Res*ondent is a 19ell&+no9 registrant and moneti7er of dictionar- 9ords2 (see descri*tion of

Res*ondentDs business in Harvard Lampoon, Inc. v. Reflex Pulishin! Inc., ;IP: Case o. !"#$$&#$=

(6lam*oon.com8)). he Res*ondent is entitled to register and use the generic 9ord 1s*rit7er2 on the basis of

its 1inherent value and attractiveness2 as an indicator for beverages and related *roducts (see PR"#

Soft$are, Inc. v. Reflex Pulishin!, Inc., ;IP: Case o. !"##$&$$'% (6*rom.com8), concerning the same

Res*ondent, and %L& Accessories Pty Ltd. v. Parna' (arahani ) %l*.com , ;IP: Case o. !"#$"&#%'').

he Res*ondent has registered and uses a multitude of other beverage&related domain names

(e.!. 6tea.com8, 69inecooler.com8, 6chiller.com8). he Res*ondent did not have the rade ar+ in mind

9hen it registered the !is*uted !omain ame.

Registered and 0sed in Bad /aith

he Res*ondent registered the !is*uted !omain ame as *art of its business (as outlined above). At the

time the !is*uted !omain ame 9as registered, the Com*lainant onl- held t9o trade mar+ registrations.

he Res*ondent could not reasonabl- be ex*ected to be a9are of these registrations. /urther, it is not

*ossible to dilute the term 1s*rit7er2, as it is generic.

he Com*lainant has not submitted that the Res*ondent registered the !is*uted !omain ame for the

*ur*ose of sale. or has the Com*lainant submitted that the Res*ondent is diverting consumers to

com*etitive *roducts (in fact, the Com*lainant ac+no9ledges that the featured lin+s are to 1irrelevant

*roducts and services2).



*age %

!ela-

he Com*lainantDs Fustification for its $=&-ear dela- in commencing *roceedings is 9ea+ (see e.!. +are(ree

Homes II, L.P. v. orld$ide #edia, Inc ., A/ Claim umber? /A$#$###$'$%<%). he Res*ondent

submits that 1a more li+el- motivator2 9as the Com*lainantDs failure to secure a 0S trade mar+ registration.

,. Dis!"ssion and 'indings

o succeed, the Com*lainant must demonstrate that all of the elements enumerated in *aragra*h %(a) of the

Polic- have been satisfied, namel-?

(i) the !is*uted !omain ame is identical or confusingl- similar to a trade mar+ or service mar+ in 9hich the

Com*lainant has rights and

(ii) the Res*ondent has no rights or legitimate interests in res*ect of the !is*uted !omain ame and

(iii) the !is*uted !omain ame has been registered and is being used in bad faith.

A. Identi!a# or Con-"sing#% Simi#ar

Paragra*h %(a)(i) of the Polic- *rovides that the Com*lainant must establish that the !is*uted !omain ame

is identical or confusingl- similar to one of the Com*lainantDs trade mar+s.

he Com*lainant o9ns a ala-sian registered trade mar+ for SPRI>4R.

he Panel finds that the !is*uted !omain ame is identical to this registered trade mar+.

he fact that a trade mar+ a**lication for SPRI>4R has been reFected in the 0S does not form a ground for

den-ing the Com*lainant this right under the first limb of the 0!RP in circumstances 9here the Com*lainant

has a legitimate trademar+ registration in another Furisdiction.

Accordingl-, the first element of the Polic- is met.

B. Rights or Legitimate Interests

Paragra*h %(a)(ii) of the Polic- *rovides that the Com*lainant must establish that the Res*ondent has no

rights or legitimate interests in res*ect of the !is*uted !omain ame. he Com*lainant is re5uired to ma+e

out a prima facie case sho9ing that the Res*ondent lac+s rights or legitimate interests.

he Panel finds that the Com*lainant has made out a prima facie case for the follo9ing reasons?

& there is no evidence that the Res*ondent is commonl- +no9n b- the !is*uted !omain ame and

& there is no evidence in the case file that the Res*ondent has an- connection 9ith a rade ar+

corres*onding to the !is*uted !omain ame it is thus clear to the Panel that the Com*lainant has not

licensed or other9ise *ermitted the Res*ondent to use the rade ar+.

he Res*ondent dis*utes the Com*lainantDs contentions and has sought to *rovide an ans9er ho9ever, in

vie9 of the PanelDs finding in relation to bad faith, the Panel does not need to decide this issue.

C. Registered and sed in Bad 'aith

Paragra*h %(a)(iii) of the Polic- *rovides that the Com*lainant must establish that the Res*ondent registered

and subse5uentl- used the !is*uted !omain ame in bad faith.



*age '

he Panel finds that Com*laint fails to demonstrate that 9hen the Res*ondent registered the !is*uted

!omain ame, the Res*ondent might have had the Com*lainantDs trade mar+ in mind. oreover, there is

nothing about the subse5uent use of the !is*uted !omain ame 9hich might reasonabl- lead to an- such

inference.

he Res*ondent has o9ned and used the !is*uted !omain ame for man- -ears. his is not a situation

9here the !is*uted !omain ame is unused and dormant for a *eriod of time. Com*are Ladro*e -roup

Plc v. Sonoma International LD+ , ;IP: Case o. !"##"&#$$.

he Com*lainant has not adduced an- evidence to sho9 that the Res*ondent has been involved in a *attern

of conduct of c-bers5uatting. In fact, the evidence before the Panel sho9s that the Res*ondentDs business

involves registering and using generic terms as domain names. :9ning a *ortfolio of generic domain names

is not evidence of bad faith. In fact, in the circumstances of this case, this su**orts the Res*ondentDs

assertion that the Res*ondent 9as not a9are of the Com*lainant or the Com*lainantDs trade mar+ 9hen

registering the !is*uted !omain ame.

he Res*ondentDs use of the !is*uted !omain ame is unrelated to the Com*lainant or an- re*utation that

the Com*lainant ma- have in its trade mar+. he Com*lainant a**ears to acce*t this, 9hen the

Com*lainant states that the lin+s on the 9ebsite are to 1irrelevant *roducts and services2.

In addition, there is no evidence before the Panel that the Res*ondent has tried to sell the !is*uted !omain

ame to the Com*lainant or to an-one else.

Accordingl-, the Com*lainant has failed to satisf- the third element of the Polic-.

D. Re/erse Domain Name $i0a!(ing

In assessing the issues in the case, the Panel must have regard to *aragra*h $'(e) of the Rules and in

*articular the follo9ing sentence namel-?

1If after considering the submissions the Panel finds that the Com*laint 9as brought in bad faith, for exam*le

in an attem*t at reverse domain name hiFac+ing or 9as brought *rimaril- to harass the domain name holder,

the Panel shall declare in its !ecision that the Com*laint 9as brought in bad faith and constitutes an abuse

of the Administrative Proceeding.2

Reverse !omain ame EiFac+ing (1R!E2) is defined in *aragra*h $ of the Rules as 1using the Polic- in bad

faith to attem*t to de*rive a registered domain name holder of a domain name2.

he Res*ondent does not see+ a finding of R!E, but as can be seen from the above 5uote from Rule $'(e)

this obligation u*on the Panel is not de*endent u*on the Res*ondent see+ing a finding of R!E. If a *anel

finds abuse of the *rocess, the *anel should sa- so in the decision. -o$ay ravel Limited v. ourism

Australia, ;IP: Case o. !"##=&#%% imermate Products Pty Ltd v. Domains y Proxy, LL+ ) /arry-or*, ;IP: Case o. !"#$&$=#.

In a dis*ute resolution s-stem such as the 0!RP, 9hich involves no discover- and, ordinaril-, no hearing, it

is crucial that all material facts are *ut before the Panel. It is for this reason that the standard form of

com*laint concludes 9ith a statement of truth certif-ing that?

1the information contained in this Com*laint is to the best of the Com*lainantDs +no9ledge com*lete and

accurate, that this Com*laint is not being *resented for an- im*ro*er *ur*ose, such as to harass, and that

the assertions in this Com*laint are 9arranted under the Rules and under a**licable la9, as it no9 exists or

as it ma- be extended b- a good&faith and reasonable argument.2

;hen a com*lainant files a com*laint, the com*lainant has no idea 9hether the res*ondent 9ill res*ond, nor

in man- cases the true identit- of the registrant. Indeed, in the maForit- of cases there is no res*onse.



*age =

Eo9ever, the failure to res*ond ma- sim*l- be that for one reason or another the res*ondent is una9are of

the com*laint. It 9ill not necessaril- be an indication that the res*ondent acce*ts the merits of the com*laint,

-et in such cases it is not uncommon for a *anel to find as fact the unchallenged assertions of the

Com*lainant 9here it seems reasonable to do so.

In addition, 9hen filing a com*laint the Com*lainant has no idea as to the identit- of the *anel. ;here the

*arties are based in different Furisdictions it is li+el- that a *anel from a third Furisdiction 9ill be a**ointed to

obviate an- *erce*tion of bias.

Accordingl-, 9hen the Com*lainant signed the statement of truth at the end of the Com*laint certif-ing that

the information contained therein 9as com*lete and accurate there 9as a distinct *ossibilit- that there 9ould

be no res*onse.

If there had been no res*onse and the selected *anel had been una9are that in the 0S a 1s*rit7er2 is a

common descri*tive term for a mixture of 9ine and carbonated 9ater, it is 5uite *ossible that that *anel

9ould have acce*ted the unchallenged assertions of the Com*lainant and ordered transfer of the !is*uted

!omain ame.

he Com*lainant, on the other hand, 9as 9ell a9are of the fact that in the 0S, the Res*ondentDs hometerritor-, a s*rit7er is a common descri*tive term for a mixture of 9ine and carbonated 9ater. In an extensive

corres*ondence 9ith the 0SP: over an attem*t to file for *rotection of its SPRI>4R mar+ in the 0S, the

0SP: so informed the Com*lainant and *rovided the Com*lainant 9ith documentar- evidence in su**ort.

he Com*lainant made no mention of this in the Com*laint. It 9as the Res*ondent 9ho dre9 the existence

of this corres*ondence to the PanelDs attention.

:f course, the fact that in the 0S a s*rit7er is a common descri*tive term for a mixture of 9ine and

carbonated 9ater does not necessaril- mean that the Com*laint fails. Eo9ever, it is li+el- to ma+e it more

difficult for the Com*lainant to demonstrate that the !is*uted !omain ame 9as registered and is being

used in bad faith. he Com*lainant 9ould have had to have some cogent evidence to sho9 that,

not9ithstanding the descri*tiveness of the term in the 0S, the Res*ondent 9as nonetheless targeting the

Com*lainant andor its SPRI>4R brand. here 9as no such evidence (cogent or other9ise) in this case.

here 9as nothing in the evidence to suggest that the Res*ondent ever had the Com*lainant or its brand in

contem*lation.

;hen the Com*lainant filed the Com*laint, the Com*lainant +ne9 that there 9as no *ro*er basis for the

Com*laint -et it 9ent ahead and filed the Com*laint. his alone merits a finding of R!E. See Dextra Asia

+o., Ltd. v. La*eside %nterprises Limited, ;IP: Case o. !"#$"&#%#.$ In so doing the Com*lainant +ne9

that it 9as accusing an innocent registrant of dishonest- (bad faith) in the ho*e that it could de*rive the

Res*ondent of the !is*uted !omain ame. oreover, the Com*lainant +ne9 that if the Res*ondent 9ere to

retain the !is*uted !omain ame, the Res*ondent 9ould have to s*end time and mone- and in all

li+elihood em*lo- re*resentation to defend itself. he Com*lainant also +ne9 that even if it lost the case, it9ould not be called u*on to com*ensate the Res*ondent.

here is another basis for a finding of R!E. ;hen the Com*laint 9as filed the Com*lainant +ne9 that the

certificate of truth 9as false. See -.A. #odefine S.A. v. A.R. #ani ;IP: Case o. !"##$&#'." B-

definition, false statements of truth onl- serve to undermine the credibilit- of the *rocess, o*ening the door to

$ 1:verall, it a**ears to the Panel that the Com*lainant has sim*l- embar+ed on a course to obtain the !is*uted !omain ame, if not

b- negotiation, then b- launching this Com*laint, but +no9ing that there 9as no real *ros*ect of being able to demonstrate registration

and use in bad faith.2" 1he Com*laint states (at *aragra*h "#) in accordance 9ith the Polic-, that Hthe Com*lainant certifies that the information contained

in the Com*laint is to the best of the Com*lainantDs +no9ledge com*lete and accurateD. he Panel does not see ho9 that could*ro*erl- have been said. In the circumstances, the Panel concludes, *ursuant of *aragra*h $'(e) of the Rules, that this Com*laint

has been brought in bad faith, and that it constitutes an abuse of the administrative *roceeding.2



*age

the *ossibilit- of unFust results.

/inall-, Paragra*h %.$ of the ;IP: :vervie9 of ;IP: Panel ie9s on Selected 0!RP Juestions, Second

4dition is instructive?

1;IP: *anels have found Reverse !omain ame EiFac+ing in circumstances including 9here? the

com*lainant in fact +ne9 or clearl- should have +no9n at the time that it filed the com*laint that it could not

*rove one of the essential elements re5uired b- the 0!RP the com*lainant G other9ise misled the *anela Res*ondentKs use of a domain name could not, under an- fair inter*retation of the reasonabl- available

facts, have constituted bad faith G.2

/or the foregoing reasons the Panel finds the Com*lainant guilt- of R!E.

. De!ision

/or the foregoing reasons, the Com*laint is denied.

ohn S3inson

Presiding Panelist

S%ed Na4i5 Shaha6"ddin

Panelist

Ton% 7i##o"gh6%

Panelist

!ate? a- "<, "#$%

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Spritzer bottled water Reverse Domain Name Hijacking