Westmore · UDRP DecisionUptobox.net
The Panel ordered transfer of <uptobox.net>. It found the domain identical to the Complainant’s registered UPTOBOX mark, found that the Respondent had not rebutted the Complainant’s prima facie case concerning rights or legitimate interests, and inferred that the Respondent knowingly registered and used the domain to divert users to competing online storage services. The inference of bad faith was reinforced by the Respondent’s subsequent registration and use of <up2box.co>, a phonetic equivalent of UPTOBOX, after learning of the proceeding.
The timeline behind uptobox.net
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind uptobox.net — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how an exact match to a distinctive coined mark, combined with use for closely similar services and post-notice migration to a phonetic-equivalent domain, can support inferences of deliberate targeting even where direct archival evidence of the original website is absent. It also shows that purchasing an available domain at a premium price does not itself create rights or legitimate interests.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Uptobox Limited v. Taha Elhosieny Case No. D2015-1179 1. The Parties The Complainant is Uptobox Limited of Victoria, Seychelles, represented by Merlin Guillaume, France. The Respondent is Taha Elhosieny of Samanoud, Gharbia, Egypt. 2. The Domain Name and Registrar The disputed domain name <uptobox.net> is registered with Name.com LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 21, 2015. On July 10, July 13, and July 21, 2015, the Respondent sent email communications to the Center indicating that it wishes to settle if the Complainant compensates for the relevant costs. On July 24, 2015, the Complainant sent an email communication to the Center confirming that it wishes to proceed with the proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2015. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on August 11, 2015. The Center appointed Alistair Payne as the sole panelist in this matter on August 24, 2015. 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 Complainant has for some time operated an online storage service through its website at the domain name <uptobox.com>. It owns French trade mark registration 3971528 for the UPTOBOX trade mark dating from December 28, 2012. The disputed domain name was registered on September 24, 2014. 5. Parties’ Contentions A. Complainant The Complainant asserts that it owns registered trade mark rights for its UPTOBOX mark as noted above and that the Respondent has no rights to use the disputed domain name which wholly contains its mark. The Complainant says that its online storage service is operated through its website at the domain name <uptobox.com>. It notes that it registered its domain name on December 6, 2010 and says that its website at this domain name has become popular in France, Egypt and elsewhere in the world. It says that its website is in the top 500-1000 websites in Morocco. The Respondent, according to the Complainant, is using the disputed domain name to resolve to a website at which it also offers online storage services but only for the purpose of distributing pirated files and content in Egypt, Saudi Arabia, Kuwait and Morocco. The Complainant alleges that the unauthorised use of its trade mark for this purpose is illegitimate and has caused damage to its brand and reputation. The Complainant asserts that the Respondent must have known about its domain name, website and UPTOBOX mark by the time that it registered the disputed domain name on September 24, 2014. It alleges that the Respondent’s registration and subsequent use of the disputed domain name for a website from which it distributes pirated content amounts to registration and use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Respondent did not file a formal response in this proceeding but before the date due for response he sent emails to the Center as follows: July 10, 2015 “I bought this Premium domain uptobox.net and was available for registration and what is the situation now and what is required To solve the problem”; July 13, 2015 “I have seen a message is very thank you to tell me this and on that basis I make I’m also a complaint Bonnna will Atdharr of this and so I paid a large sum of money in exchange for the purchase of this domain to work with, therefore I request the representative Up To Box company that adequate compensation pay me to give him for the disputed domain … Thanks”; July 21, 2015 “i shut down domain now I want $ 1,500 to compensate for losses suffered because of the lock domain and give it up.” On July 24, 2015 the Center received the following email from the Complainant: “Hello, In reply to the respondent, we will not pay 1500$ for a domain registered in bad faith, it’s called cybersquatting. To give another proof of the respondent bad faith, we seen he has registered the domain name up2box.co, who’s now in replacement of uptobox.net. So we’d like to continu the UDRP procedure against the respondent.” The Panel notes that the Respondent’s communications were received prior to August 10, 2015, the final deadline for the submission of its formal response and can therefore be admitted to the record. The Complainant’s email in response although supplemental to the Complaint raises a new issue concerning the subsequent conduct of the Respondent following the closing down of his website at the disputed domain name. This is new information that is relevant to this dispute and accordingly the Panel exercises its discretion to admit it into the record of this proceeding. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns a trade mark registration in France under registration 3971528 for the UPTOBOX trade mark. The disputed domain name wholly contains this mark and is identical to it. As a result, the Panel finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has alleged that the Respondent is not entitled to use the disputed domain name containing its UPTOBOX mark and that it has made an illegitimate use of the disputed domain name for its own purposes. In the Panel’s view and also for the reasons set out in the discussion under the third element below, the Complainant has made out a prima facie case under this element of the Policy. The Respondent has not rebutted the Complainant’s prima facie case except to say that the disputed domain name was freely available for purchase as a “premium” domain name. The fact alone that the disputed domain name was available for purchase does not give the Respondent any rights or legitimate interests in the disputed domain name. As a result, the Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant and the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name some years after the Complainant says that its website at “www.uptobox.com” had become popular in a number of countries, including in Morocco and Egypt. The Panel notes that the Respondent’s address is in Egypt and that the Respondent did not seek to deny the assertion that some degree of repute attached to the Complainant’s website and mark in Egypt. The Respondent rather asserted that the disputed domain name had been available for sale as a “premium” domain name, that he paid a lot of money for it and that he sought compensation accordingly from the Complainant. The Complainant’s UPTOBOX mark is a quite distinctive coined phrase and although a combination of common English words, is not a commonly used phrase. In these circumstances, the Panel finds it hard to believe that the Respondent’s choice of the disputed domain name was independent and coincidental. It is notable that the Respondent has confirmed that upon seeing that the disputed domain name was available at a “premium” rate the Respondent was still prepared to pay a premium price. This indicates to the Panel that it is more than likely that the Respondent had seen the Complainant’s website or was aware of its trade mark and sought to register the disputed domain name on purpose. As a result, the Panel finds that there is a strong inference that the Respondent registered the disputed domain name with knowledge of the Complainant’s mark and accordingly in bad faith. Although the Complainant has not submitted a copy of the Respondent’s website at the disputed domain name, it has asserted in subsequent email that after the Respondent removed the website at the disputed domain name the Respondent resumed his former website activities from another domain name, <up2box.co>. On reviewing this website the Panel notes that it is a website at which the Respondent also offers on-line storage services that would appear to be in competition with the Complainant’s business offering. The domain name <up2box.co> is owned by the Respondent according to a publicly- available WhoIs search and the Respondent registered this domain name on July 13, 2105, the same date of its second email to the Center. Based on all of this information, the Panel infers on the balance of probabilities that the Respondent chose the disputed domain name and used it to resolve to a website at the disputed domain name at which it offered very similar commercial storage services to those offered by the Complainant at “www.uptobox.com”. The Panel infers that the Respondent sought to use the Complainant’s mark at the disputed domain name in order to divert Internet users to its website by confusing them into thinking that his site was somehow related to or owned by the Complainant in terms of paragraph 4(b)(iv) of the Policy. The Panel’s inference is only reinforced by the Respondent’s subsequent conduct in registering the domain name <up2box.co> (which is a phonetic equivalent of the Complainant’s mark) after becoming aware of this proceeding and then seeking to run his website from that domain name. Accordingly, the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and that the Complaint succeeds under the third element of the Policy. 7. Decision 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 name <uptobox.net> be transferred to the Complainant. Alistair Payne Sole Panelist Date: August 30, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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