Caribou.com Generic Animal Domain Name saved in WIPO UDRP (December, 2021)

ADMINISTRATIVE PANEL DECISION
Scott Dylan v. K-Ventures FZE LLC
Case No. D2021-2977

  1. The Parties

 The Complainant is Scott Dylan, United Kingdom, represented by Sheridans, United Kingdom.

The Respondent is K-Ventures FZE LLC, United Arab Emirates[1], represented by Muscovitch Law P.C., Canada.

  1. The Domain Name and Registrar

The disputed domain name <caribou.com> is registered with GoDaddy Online Services Cayman Islands Ltd.  (the “Registrar”).

  1. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021.  On September 10, 2021, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.  The Center sent an email communication to the Complainant on September 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.  The Complainant filed an amended Complaint on September 16, 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 September 21, 2021.  In accordance with the Rules, paragraph 5, the original due date for Response was October 11, 2021.  On September 29, 2021, in accordance with paragraph 5(b) of the Rules, the Respondent requested an extension of time to file the Response.  The due date for Response was duly extended to October 15, 2021.  The Response was filed with the Center on October 13, 2021.  On October 25, 2021, the Complainant requested permission to make an unsolicited supplemental filing and it subsequently made such a filing on November 1, 2021.  The Respondent made an unsolicited supplemental filing on November 10, 2021.  The Complainant made a second unsolicited supplemental filing on the same day.

The Center appointed Matthew Kennedy, Antony Gold and Gerald M. Levine as panelists in this matter on November 22, 2021.  The Panel finds that it was properly constituted.  Each member of 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.

On November 28, 2021, the Center sent a follow-up email to the Registrar asking it to indicate, if possible, the date on which the Respondent acquired the disputed domain name.  On the following day, the Registrar confirmed that it did not have the information to respond to that question.

  1. Factual Background

The Complainant is an individual who claims to own one third of the share capital in a company formed in 2018 that is the ultimate parent company of CW (No. 1) Ltd, which provides parcel delivery and courier services under the trade name “Caribou”.  The Complainant holds United Kingdom trademark registration number UK00003347585 for CARIBOU / KARIBOU, registered as a series of two marks on May 10, 2019, specifying goods and services in classes 25, 36, 38 and 41.  That trademark registration protects both CARIBOU and KARIBOU separately and it remains current.  The Complainant also registered the domain name <wearecaribou.com> on October 21, 2018, which resolves to a website for the Caribou parcel delivery and courier service.  According to that website, the service operates from 15 locations, all of them in the United Kingdom, shipping worldwide.  The website displays a logo consisting of a lateral view of an antler in white and the word “Caribou” in all capitals in red. 

The disputed domain name was originally registered on May 31, 1995.  It was acquired on or about May 14, 2019 by DXB Domains LLC, a Belize company incorporated on February 21, 2019.  The sole initial member of that company was Mr. Robert Kalfayan, a resident of Dubai, United Arab Emirates.  The purchase price of the disputed domain name was USD 91,482.02.  From November 1, 2020 to April 8, 2021, the disputed domain name resolved to an online marketplace where it was advertised for sale with a logo consisting of two vertical antlers in colors and the word “Caribou”, with an initial capital, in grey.  The asking price varied over time from USD 275,000 to USD 325,000.  The advertisement suggested that the disputed domain name could be used with an alcoholic beverage, a wildlife fund, a nature retreat or a winter clothing brand.

The disputed domain name was transferred to the Respondent, K-Ventures FZE LLC, an Ajman, United Arab Emirates company incorporated on June 7, 2021.  The sole manager and shareholder of the Respondent is Mr. Kalfayan.  According to the Response, the Respondent’s principal transferred his domain name holdings to the Respondent upon its incorporation.  The reason for the transfer of these holdings is not disclosed on the record of this proceeding.  The Respondent specializes in the acquisition of premium domain names.  It also holds, among others, <beluga.com>, <hippopotamus.com>, <iguana.com>, <raccoon.com>, <scampi.com> and <wapiti.com> (“wapiti” being a large deer, also called an elk).  Its website displays the disputed domain name with an image of a reindeer under the heading “Our recent acquisitions” and above its contact details and a contact form.  The disputed domain name now redirects to the website of a domain name broker, which displays a notice reading “Premium domain names that may be available for sale” above a button labelled “contact us” and a list of domain names that does not include the disputed domain name.  On July 23, 2021, after Caribou Biosciences announced its stock market listing on Twitter, the broker sent a tweet in reply offering to help it acquire the disputed domain name.  The following week, on July 27-28, 2021, the broker sent emails to the Caribou parcel delivery and courier service, Caribou Coffee and Caribou Biosciences in which he touted the disputed domain name as an “exact match” brand and asked if they were interested in acquiring it.  When the Complainant expressed interest, the broker explained that the owners of the disputed domain name were seeking “strong, bona fide offers from potential buyers”.  The broker did not specify a price and the Complainant did not make an offer.

A “caribou” may be defined as “a large North American reindeer”. [2]

  1. Parties’ Contentions
  1. Complainant

As well as owning unregistered rights in the name “Caribou”, the Complainant is the proprietor of a United Kingdom trademark registration for CARIBOU / KARIBOU.  The disputed domain name is identical or similar to the Complainant’s CARIBOU trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.  The Complainant has not granted any license, permission or authorization to the Respondent to create the disputed domain name by incorporating the CARIBOU trademark.  The Respondent’s only use of the disputed domain name since acquiring it has been to advertise it for sale rather than having any intentions to use it in connection with a bona fide offering of goods or services.

The disputed domain name was registered and is being used in bad faith.  The sole purpose of the acquisition of the disputed domain name was for the purpose of selling it to the owner of a trademark associated with the disputed domain name.  The Respondent is attempting to sell the disputed domain name for an excessively high price.  It appears that the Respondent became aware of the Complainant’s company at some point between October 2018 and November 2020, when the company began gaining significant media attention further to its corporate merger and successful trademark application.  When the disputed domain name became available for sale, the associated website simultaneously began displaying a logo very similar to the logo on the Caribou parcel delivery and courier service website.  The domain name broker contacted the Complainant asking it to place a competitive bid to buy the disputed domain name.  The Respondent’s intention in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent trademark rights.

  1. Respondent

The Respondent acknowledges that the Complainant has a registered trademark for CARIBOU in connection with courier and other services and further acknowledges that it is identical to the disputed domain name for the purposes of the UDRP.

The Respondent has rights and a legitimate interest in the disputed domain name because it corresponds to a well-known descriptive dictionary word and was registered in good faith.  “Caribou” is a common dictionary word to which the Complainant does not have exclusive rights.  There is no requirement that a domain name registrant use or have any use for a domain name at the time of registration.  At the time of registration, the Respondent not only had never heard of the Complainant or its mark, but the Respondent held the reasonable view that no one company could claim exclusive rights in the common dictionary word.  The Respondent uses the disputed domain name in connection with its business, i.e., investment in generic domain names. 

The disputed domain name was not registered and is not being used in bad faith.  The Respondent invested in a generic domain name consistent with its established business and not because of the Complainant.  The Respondent had no awareness of the Complainant and there is no evidentiary basis to conclude otherwise.  Even if the Respondent had been specifically aware of the Complainant’s marks, there was no basis for the Respondent to conclude that the Complainant’s marks entailed any exclusive rights over the generic word.  The Complainant’s company is relatively new with no evidence of any significant reputation prior to the registration date of the disputed domain name.  Absent direct proof that a generic domain name such as the disputed domain name was registered primarily for the purpose of profiting from the Complainant’s trademark rights, there can be no finding of bad faith registration and use.  In this case it is beyond credulity to believe that the Complainant’s modest, localized courier business was the reason that the Respondent spent over USD 90,000 to acquire the disputed domain name.  The Respondent listed it for sale to the general public on an online marketplace, which demonstrates the Respondent’s awareness of its broad appeal rather than a belief that it would be primarily of interest to the Complainant.  The Respondent had no input into the logo displayed on the online marketplace, which was plainly different from the Complainant’s logo and, in any case, antlers are an obvious and common theme in Caribou brands.  The broker tweeted a message to Caribou Biosciences before it contacted the Complainant, offering to assist it in acquiring the disputed domain name.  The only reasonable conclusion from the Respondent’s broker contacting the Complainant and two other parties regarding the disputed domain name two years after its acquisition was that the broker figured they might be interested in purchasing a common dictionary word domain name that happened to correspond to their respective brands, but there was nothing unlawful or in bad faith about this in the least.

  1. Discussion and Findings

6.1 Unsolicited Supplemental Filings

On October 25, 2021, the Complainant requested permission to make a supplemental filing and on November 1, 2021 it made a first supplemental filing.  On November 10, 2021, the Respondent objected to the admission of the Complainant’s supplemental filing but, in the event that the Panel decided to admit that filing, it made its own unsolicited supplemental filing.  Later the same day, the Complainant made a brief second unsolicited supplemental filing in reply.

The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent.  No express provision is made for supplemental filings by either Party, except in response to a deficiency notification or if requested by the Center or the Panel.  Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either Party.

In this dispute, the Complainant requested permission to make a supplemental filing to address some of the issues raised in the Response which it identified as an alleged omission in the Response, two matters that it did not consider relevant and one argument that it did not consider cogent.  The supplemental filing was not solicited.  It presents no new facts and no newly available evidence nor does it respond to any material allegation in the Response that could not reasonably have been anticipated at the time when the Complaint was filed.  The Panel finds that the Complainant was already given a fair opportunity to present its case in the Complaint and sees no exceptional circumstances that would justify admitting the Complainant’s first supplemental filing.

Therefore, the Panel declines to accept the Complainant’s first supplemental filing as part of the record of this proceeding.  Consequently, the premise for accepting the Parties’ subsequent respective unsolicited supplemental filings is not met and there is no need to consider admitting them into the record either.

6.2 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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.

  1. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the CARIBOU mark. 

The disputed domain name wholly incorporates the Complainant’s CARIBOU mark.  The only additional element is a generic Top-Level Domain (“gTLD”) suffix (“.com”).  As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy.  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.  The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

  1. Rights or Legitimate Interests

In view of the Panel’s findings in Section 6.2C below, it is unnecessary to consider the second element of paragraph 4(a) of the Policy.

  1. Registered and Used in Bad Faith

The Panel recalls that the third element in paragraph 4(a) of the Policy sets out conjunctive requirements, which means that the Complainant must show both that the disputed domain name was registered in bad faith and that it is being used in bad faith.  Failure to satisfy either requirement will result in the rejection of the Complaint.

As regards registration, the Complainant must demonstrate that it is more likely than not that the Respondent was aware of the Complainant or of its CARIBOU mark at the time when it acquired the disputed domain name and that it intended to benefit unfairly from that mark and/or to damage the business of the Complainant.  See Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., WIPO Case No. D2009-1580.

The Panel notes that the Respondent acquired the disputed domain name by transfer.  Both the Respondent and the transferor are commonly owned by an investor and trader in domain names.  The consensus view of WIPO panelists is that the transfer of a domain name to a third party generally amounts to a new registration, which requires the issue of bad faith registration to be determined at the time the current registrant took possession of the disputed domain name.  See WIPO Overview 3.0, section 3.9;  and, for example, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. 

The Respondent conflates the Respondent with the transferor, DXB Domains LLC, on the basis that the transfer did not entail a change in beneficial ownership.  The Response presents evidence showing that the same person is the sole shareholder of both companies and the Panel sees no reason to doubt the Respondent’s evidence on this point.  Certain panels under the Policy have taken the view that “… the transfer of a domain name or trademark between commonly-controlled persons does not act of itself to extinguish rights and legitimate interests that may have accrued in that domain name or trademark.”  See Schweizerische Bundesbahnen SBB v. Gerrie Villon, WIPO Case No. D2009-1426.  On the other hand, the Respondent and DXB Domains LLC are separate legal entities incorporated in separate jurisdictions, the purpose of the transfer between them has not been disclosed, and the transfer was contemporaneous with a significant change in use of the disputed domain name.  Certain panels have considered a transfer – even between parties under common control – to be a new registration for the purposes of a bad faith analysis.  See TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785;  and Intelligen LLC v. Converg Media LLC, WIPO Case No. D2010-0246. 

Ultimately, in the present dispute it makes no difference to the Panel’s conclusion whether bad faith registration is assessed as at the date on which the Respondent acquired the disputed domain name (according to the Response, upon its incorporation on June 7, 2021), or as of the date on which the Respondent’s commonly-controlled predecessor-in-interest, DXB Domains LLC, acquired the disputed domain name (on or about May 14, 2019), for the reasons set out below.

The Respondent K-Ventures FZE LLC acquired the disputed domain name two years after the Complainant obtained its United Kingdom trademark registration for CARIBOU.  The disputed domain name is identical to the Complainant’s mark.  However, the word “caribou” is found in the dictionary and refers to a type of reindeer.  There is no reason why the Respondent should be deemed to have constructive notice of the contents of the United Kingdom trademark database.  Accordingly, the fact that the disputed domain name wholly incorporates “caribou” with the addition only of a gTLD extension does not, of itself, give rise to the inference that the Respondent knew of the Complainant’s mark or intended to target the Complainant.

The Complainant alleges that the Respondent was aware of his company due to media attention and because it displayed the disputed domain name with a logo very similar to his company’s logo.  However, the evidence does not bear out either of these allegations.  The evidence of media attention is meagre, consisting of three articles published on logistics industry websites and one article in a local newspaper, all in the United Kingdom.  The similarity between the two logos is, in the Panel’s view, chiefly conceptual and likely to derive from the nature of a caribou as an animal with antlers.  Further, the Complainant’s business locations are all in the United Kingdom, while the Respondent is in the United Arab Emirates.  Although it is reasonable to infer that the Respondent, as a domain name investor and trader, is seeking a price for the disputed domain name in excess of the USD 91,482.02 paid for it by DXB Domains LLC, such a substantial sum does not indicate an awareness of the Complainant’s trademark rights either, as the evidence on record shows it to be within the range of prices for animal domain names.  In sum, the Panel considers this evidence insufficient for the Panel to infer that the Respondent was aware, or should have been aware, of the Complainant or his mark prior to July 27, 2021.  In these circumstances, the fact that DXB Domains LLC acquired the disputed domain name so soon after the Complainant’s trademark registration appears coincidental.

On July 27, 2021, the Respondent’s broker had actual knowledge of the Complainant, as he sent an unsolicited email to the Caribou parcel delivery and courier service on that date and corresponded with the Complainant.  The evidence shows that this contact was part of a sequence of events triggered by an announcement made on July 23, 2021 on Twitter by an unrelated party (Caribou Biosciences, which referred to itself as “Caribou”).  That evidently prompted the broker to tweet a reply offering to help it acquire the disputed domain name, which is not displayed on the broker’s website.  The broker then sent emails on July 27-28, 2021 touting the disputed domain name as an “exact match brand” to three businesses:  the Caribou parcel delivery and courier service, Caribou Coffee and Caribou Biosciences.  The Panel considers this to be the most plausible explanation open on the record as to how the Respondent’s broker became aware of the Complainant’s mark. 

The Respondent provides a credible explanation for its prior choice to acquire the disputed domain name.  The Respondent, like its predecessor-in-interest DXB Domains LLC, registers premium domain names including, in particular, animal domain names such as the disputed domain name.  It acquired the disputed domain name as part of the domain name holdings of DXB Domains LLC.  The mere fact that the Respondent operates a domain name business does not by itself give rise to an inference that it targeted a mark.  The Response provides the results of a recent Internet search for “caribou” conducted in Dubai, which shows that the top results are all for Caribou Coffee and reindeer, although the Complainant appears on the third page.  In the Panel’s view, these facts lend more support to the Respondent’s explanation for choosing the disputed domain name than they do to the Complainant’s claim that it targeted the Complainant’s CARIBOU mark. 

For the above reasons, the Panel is unable to find it more likely than not that the Respondent intended to benefit unfairly from the Complainant’s mark and/or to damage the business of the Complainant when it acquired the disputed domain name.  Accordingly, it is unnecessary for the Panel to consider whether the disputed domain name is being used in bad faith.  The Panel does not find that the Complainant has met its burden under the third element in paragraph 4(a) of the Policy.

  1. Decision

For the foregoing reasons, the Complaint is denied.

/Matthew Kennedy/

Matthew Kennedy
Presiding Panelist

 

/Antony Gold/

Antony Gold
Panelist
/Gerald M. Levine/

Gerald M. Levine
Panelist
Date:  December 6, 2021