Immihelp, LLC v. Babak Shahafar
It is wise to remember that to win a domain name case, the Complainant who brings the claim must prove all of the elements set out in paragraph 4(a) of the UDRP. Proving one and failing to prove the others or even proving two but not the third spells a loss. In these matters the evidence adduced and the conclusions the panel is able to draw from the evidence are very important in determining the success or otherwise of the case.
For example, where a Respondent’s Domain Name comprises solely of a Complainant’s trade mark, one might be tempted to assume that a domain case is relatively open and shut. But alas not. The mere fact that a Respondent’s Domain name is identical or confusingly similar to a Complainant’s mark does not necessarily indicate that the Respondent lacks rights or legitimate interests in respect of the Domain Name, or that the Domain Name was registered or has subsequently been used in bad faith. In some instances, relevant facts such as the existence of a ccTLD “.com.au” suffix might serve to indicate that the parties’ businesses cater to sufficiently different markets so as to negate suggestions of bad faith or a lack of legitimacy. This was illustrated in Immihelp, LLC v. Babak Shahafar, WIPO Case No. DAU2013-0041, where the domain name at issue was <immihelp.com.au> and the trade mark was IMMIHELP.
The Complainant in the case is in the business of providing information services relating to immigration to the United States, but not to Australia and is the registrant of several gTLD and ccTLD domain names incorporating “immihelp” including <immihelp.com>, and is the registered proprietor of several IMMIHELP trademarks ( invoking the notion of immigration help). This includes a US trade mark registered on January 31 2006 (claiming first use in 1999) as well as an Australian trade mark registered on March 30, 2012 for ‘Providing consumer information in the field of immigration, insurance and visas’.
The Respondent is a registered Migration Agent in Australia (i.e. employed to promote migration to Australia) who registered the Domain Name <immihelp.com.au> on November 18, 2009. While there was no active website, the Domain Name was used by the Respondent for email since April 2011. The Complainant contended: that it had acquired common law trade mark rights in IMMIHELP through extensive use since 1999, that it had provided services under the IMMIHELP mark to Australians in relation to their migration and travel to the United States, and that the Domain Name is identical or confusingly similar to its IMMHELP mark. It further contended that the Respondent had no rights or legitimate interests in relation to the Domain Name because: the trade mark is an invented word that traders would only choose for the purpose of creating a false association with the Complainant, the Respondent must have known of the Complainant’s prior rights and reputation when he registered the Domain Name, the Respondent had no relationship or connection with nor permission from the Complainant, the Respondent’s lack of a bona fide use or demonstrable preparations to use the Domain Name indicated that he was aware of the Complainant’s rights and reputation in respect of the IMMIHELP mark which therefore sufficed to constitute notice to the Respondent of the subject matter of the dispute. Lastly, the Complainant argued that the Domain name was registered in bad faith for the purpose of preventing the Complainant from reflecting its distinctive mark in the “.com.au” space, and that it was being used in bad faith for the purpose of creating a likelihood of confusion with the Complainant’s name and trade mark.
The panelist accepted that the Domain Name was identical to the Complainant’s IMMIHELP mark, so the Complainant had reached first base. However, the panelist was less convincedthat the remaining elements had been made out.
It was at this point that the first evidentiary issue of importance in this case arose.
The Respondent claimed that the case came under paragraph 4(c)(i) of the Policy and that he had made demonstrable preparations to use the domain name for a bona fide business. The demonstrable preparations were that a designer had been retained to design a logo several months after the domain name had been registered. That was not as strong as the evidence required in some other decisions. However, it was accepted as sufficient.
The next issue was whether the Respondent had made those demonstrable preparations before he became aware of the dispute. The Complainant argued that the Respondent had become aware of the dispute when he registered the domain name because he would then have been aware of the Complainant’s trademark and hence the dispute. But as the panelist pointed out, this did not mean the Respondent became aware of the dispute at that time. As the panelist said, ‘mere awareness of a complainant’s identical mark is insufficient to constitute notice of a domain name dispute under the Policy’.
Notice of the dispute, in reality, occurred when the Respondent received a cease and desist letter and the Respondent had thus made demonstrable preparations before he received notice of the dispute.
The Complainant was therefore not able to establish that the Respondent lacked rights or legitimate interests in respect of the Domain Name because the Respondent did make preparations to use the Domain Name shortly after he registered it and these preparations took place before notice to the Respondent of the dispute.
The third interesting issue the significance placed by the panelist on the fact that the disputed domain name was <immihelp.com.au>. The.au domain name implied that the Respondent was offering immigration advice on migration to Australia, not to the US, which was the case of the Complainant. Likewise, his business was concerned with immigration to Australia, a service that the Complainant was not entitled to provide. The Respondent was therefore not claiming to offer the same services as the Complainant, thus enhancing the legitimacy of the way he was using his domain name.
The Panel also held that the Respondent plausibly registered the <immihelp.com.au> Domain Name for reasons other than creating a false association with the Complainant.
On the question of bad faith, the Panel held that the Respondent most likely registered the Domain Name to promote his own business of helping people with immigration to Australia, and that in light of the Respondent’s inactive website there is nothing in the facts to suggest he intentionally attempted to create a likelihood of confusion with the Complainant’s name or mark to achieve commercial gain. That negated any suggestion of bad faith.
The claim was therefore dismissed.