Riskmethods GmbH Germany, Respondent is LEVEL2 LLC and Lever10 Inc. United States, Represented by CyLaw Solutions India – Complainant established in 2013 in Munich Germany – Complainant provides specialized supply chain risk management services based on a software as a service solution – First Respondent sold domain in five figures to second Respondent in Dec 2017, the date referred as new Registration in terms of UDRP Policy and WIPO Overview – Respondent owned more generic domain names – Complainant device mark ‘Risk Methods’ disclaimed in USA for words ‘RISK METHODS’ – The website was put to legitimate use but carried AD of Complainant’s Competitor – The Domain Name upheld as being used legitimately as in US where Respondent carries on business, Complainant could not prove common law rights in the Trademark while words ‘RISK METHODS’ were disclaimed by USPTO, which is otherwise a generic term – Complaint Denied.
ADMINISTRATIVE PANEL DECISION
riskmethods GmbH v. LEVEL2 LLC / Lever 10 Inc.
Case No. D2019-0286
1. The Parties
The Complainant is riskmethods GmbH of Munich, Germany, represented by SSW Schneider Schiffer Weihermüller, Germany.
The Respondent is LEVEL2 LLC of Los Angeles, California, United States of America (“United States”), internally represented (“First Respondent”) and Lever10 Inc., of Las Vegas, Nevada, United States (“Second Respondent”), represented by CyLaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <riskmethods.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2019. On February 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2019. Later that day, the Center received email communications from the respective Respondents. The Complainant submitted a Supplemental Filing on March 1, 2019.
In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2019. Upon request of the Second Respondent, the due date for Response was automatically extended to March 17, 2019, in accordance with the Rules, paragraph 17. The Response was filed with the Center on March 17, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 28, 2019. 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 was established in Germany in 2013. It provides specialised supply chain risk management services based on a software as a service solution. According to the Complaint, it operates globally with offices in Poland and the United States as well as Germany. Some of its clients include companies like Bosch, Huawei, Leica, Nufarm and Telekom.
It has received recognition for its innovative services from a number of publications and organisations including The FinTech 50 2018, Spend Matters Almanac: 50 to Know, Supply & Demand Chain Executive: 100 top Supply Chain Transformations, the Federal Association of Materials Administration, Procurement and Logistics in Austria, Explore WMS: Top Supply Chain Startups 2017 and Pros To Know, 2015 – 2017.
The Complainant has a number of registered trademarks for the expression RISKMETHODS and segmented ball device (the Trademark):
– German Registered Trademark No. 302013010306 registered on January 4, 2013 in respect of a range of services in International Classes 35, 36 and 42 namely:
“Class 35: Advertising; business management; company administration; office work, class 36: Insurance; financial affairs; monetary affairs; real estate affairs; class 42: Scientific and technological services and research and related design services; industrial analysis and research services; design and development of computer hardware and software”
– European Union Trademark (EUTM) No. 012657375 registered on June 3, 2014 in respect of a range of services in International Classes 35, 36 and 42 namely:
“Class 35: Business analysis, research and information services; Commercial trading and consumer information services; Business assistance, management and administrative services; Advertising, marketing and promotional services; Business consultancy and advisory services; class 36: Provision of prepaid cards and tokens; Safe deposit services; Financial and monetary services, and banking; Valuation services; Fundraising and sponsorship; Real estate services; Underwriting services; Pawnbrokerage and class 42: Design services; IT services; Testing, authentication and quality control; Science and technology services; Developing computer software”
– United States Registered Trademark No. 5,532,243, which was filed on October 8, 2016 and registered on August 7, 2018 in respect of development of computer software in International Class 42;
– International Registration No. 1326486, which was registered on October 8, 2016 in respect of services in International Class 42; and
– Australian Registered Trademark No. 1818844 registered from October 8, 2016 in respect of development of computer software in International Class 42.
While the International Registration asserts that the words in the trademark have no meaning, the United States Registration includes a disclaimer:
”No claim is made to the exclusive right to use ‘RISK METHODS’ apart from the mark as shown”.
The disputed domain name was first registered on February 24, 2011, apparently by the First Respondent. It appears that the First Respondent is in the business of reselling domain names and, while the First Respondent held it, the disputed domain name apparently lay dormant.
According to communications received from both Respondents and the Response, the First Respondent sold the disputed domain name to the Second Respondent on December 27, 2017 for what the Second Respondent wishes to be described coyly as “a premium price”.
The corporate entity comprising the Second Respondent was founded in 2009. Mr. Righter is its Chief Scientist and President. According to the Response, the Second Respondent provides science based business campaigns applying mathematics and data architecture applied to global business programs for high-growth products and services.
The Second Respondent says it purchased the disputed domain name because it is a common term and with the intention of using it for a new financial risk solution to be launched in 2019/2020. Pending that launch, the disputed domain name has resolved to a website which provides “some basic information as to risk methods in the context of Risk Management and ISO 31000”. The website has also included at least one advertisement by Resilinc, which is a competitor of the Complainant in the field of providing supply chain risk management solutions involving the use of big data.
The Second Respondent, or Mr. Righter, also holds numerous other domain names which it says are generic or descriptive names related to its activities. These include <math-labs.net>, <ai-driven-bookings.com>, <decision-quality-platform.com>, <dynamic-performance-assurance.com>, <canada-vc-fund.com>, <expertise-marketing.com>, <network-layer-2.com> and <imobileinternet.com>.
Following the “sale” of the disputed domain name by the First Respondent to the Second Respondent, the WhoIs details were not updated to reflect the change of ownership. The Registrar promoted the disputed domain name for sale. The Complainant thought it had negotiated the purchase of the disputed domain name through the Registrar. In August 2018, however, after agreement on a price in excess of EUR 25,000 appeared to have been reached, the Registrar withdrew from the transaction informing the Complainant that the disputed domain name had been sold already in December 2017.
5. Discussion and Findings
The Panel notes that, while the First Respondent is formally recorded in the WhoIs record as the registrant, both the First Respondent and the Second Respondent acknowledge that the Second Respondent is in fact the person controlling the registration and use of the disputed domain name. In any event, there is no dispute between them that the First Respondent is formally holding the disputed domain name on behalf of the Second Respondent. Accordingly, the application of the Policy in the present circumstances falls to be determined on the basis of the Second Respondent’s rights and interests. Except where it is necessary to distinguish between the roles of the First and Second Respondent, therefore, the Panel will simply refer to them collectively as “the Respondent”.
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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Admission of the Complainant’s unsolicited supplemental filing is in the Panel’s discretion. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. In the present case, the supplemental filing addresses issues arising from the disclosure after the Complaint was filed of the Second Respondent as the purchaser of the disputed domain name. These were not matters that the Complainant was able to address beforehand. The Panel therefore admits the supplemental filing into the record.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is 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 and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified in Section 4 above for the mark RISKMETHODS and segmented ball device.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. See e.g. WIPO Overview 3.0, sections 1.7 and 1.11. 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.
As device elements cannot be represented in domain names, the usual course is to disregard such elements and make the comparison on the basis of the textual elements only. See WIPO Overview 3.0, section 1.10. As the Respondent points out, however, exclusive use over the textual element alone has been disclaimed in the United States registration. As explained in WIPO Overview 3.0, section 1.10, therefore, panels do not usually include disclaimed elements in the comparison.
The disclaimer affects only the registration in the United States. No disclaimer has been given in respect of the other registrations.
The Respondent further contends the disputed domain name consists of two ordinary English words which, when combined in this way, have a clearly recognised meaning.
The Panel accepts that “risk methods” is an expression in ordinary English usage. Whether it is descriptive in any particular context, however, depends on the context it is being used in. “North Pole” for example is a geographic place. Its use in relation to bananas, however, would hardly be descriptive and so it could arguably serve as an identifier of trade source for such products. Consistently with usual practice under the Policy, therefore, the Panel considers it is preferable to consider issues related to the scope of the trademark in the more nuanced analysis required by the second and third elements of the Policy.
Disregarding the “.com” gTLD, the disputed domain name is identical to the textual element of the Complainant’s German and Australian Trademarks and also the EUTM.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. 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 name.
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. 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. See e.g., section 2.1 of the WIPO Overview 3.0.
It is not disputed between the parties that the Complainant has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name and the Respondent does not claim any trademark rights in the disputed domain name.
As already noted, however, the Respondent says it acquired the disputed domain name in good faith because it was a common term with an intention of using it in a yet to be launched financial risk solution based on the use of complex algorithms and maths methods. The Respondent expressly denies knowledge of the Complainant.
The Respondent does not provide any objective evidence to corroborate its claims that steps to launch the claimed business and an associated website are in preparation. This is usually a requirement to make out the defence under paragraph 4(c)(i). See WIPO Overview 3.0, section 2.2.
Moreover, the Complainant points out that the website to which the disputed domain name has resolved after the Second Respondent became the holder includes an advertisement for Resilinc, a business competing with the Complainant. The Panel notes that the Resilinc advertisement is the only such advertisement on the Respondent’s website.
The Respondent’s explanation of this is less than frank. In response to an email complaint before the Complaint was filed, Mr. Righter claimed that the Respondent had sold “a bundle of network adverts to an inventory team”. In its Response, however, the Respondent says its employees reached out and offered advertising options to the various companies whose publications had been linked on the webpage to which the disputed domain name resolved from January 2018. According to the Respondent, Resilinc just happened to be the only business which took up the option. The Respondent does not address, however, the fact that Mr. Righter in addition to being the Chief Scientist and President of the Respondent is, or was during the period from around July 2017 to at least October 2018 the interim Chief Marketing Officer of Resilinc, as evidenced by the numerous “posts by grover” on that company’s website in that period and his LinkedIn profile.
The Panel notes that, at the time this decision is being prepared, the domain name <resilinc.com> resolves to a parking page at which it is offered for sale. The registrar for <resilinc.com> is the Registrar and the same privacy service is used as the WhoIs contacts for the disputed domain name (prior to the filing of this dispute).
The Panel therefore has grave reservations about the explanation for the advertisement and motivations of the Respondent. In most circumstances, those reservations would lead the Panel to reject the purported claim of rights or legitimate interests.
In the present case, however, the term “risk methods” is clearly descriptive and used for a wide range of analytic methods. The Respondent’s activities, or many of them, as disclosed on its website appear to encompass the application of risk analysis methods as part of its services. The Respondent also has a range of “descriptive” domain name registrations. The dates on which the Respondent obtained those registrations is not clear. Most significantly, the Respondent is based in and appears (so far as the evidence goes) to operate largely in the United States.
That is particularly important in the present case as the Complainant does not have, or has not proven, any trademark rights in the expression “risk methods” in the United States. The expression is part of the United States Registered Trademark. However, rights over the exclusive use of “risk methods” are expressly disclaimed. Moreover, the Complainant has not provided sufficient evidence on which the Panel could make a finding of common law rights in the expression. See WIPO Overview 3.0, section 1.3.
In these circumstances and with considerable reservations, the Panel concludes that the Complainant has not been able to establish the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must fail.
C. Registered and Used in Bad Faith and Reverse Domain Name Hijacking
As the Complaint must fail, no good purpose would be served by considering the third requirement under the Policy.
The Respondent, however, has sought a ruling that the Complainant has engaged in reverse domain name hijacking.
The Panel rejects that claim out of hand.
For one thing, the Second Respondent failed to update the WhoIs records after its purchase of the disputed domain name so that, when the Complaint was filed, the disputed domain name was registered in the name of the First Respondent, a domain name broker.
For another thing, the Second Respondent has succeeded on a narrow basis in circumstances where the Complainant does have relevant trademark registrations in some parts of the world which are not subject to express disclaimers.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: April 10, 2019