Mangels Industrial S.A. v Mira Holdings, Inc

WIPO Case No. D2024-2275

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mangels Industrial S.A. v. Mira Holdings, Inc.

Case No. D2024-2275

1. The Parties

The Complainant is Mangels Industrial S.A., Brazil, represented by Crepaldi Advogados Associados, Brazil.

The Respondent is Mira Holdings, Inc., United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <mangels.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 June 3, 2024.

On June 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 5, 2024, 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 (Godaddy.com LLC) and contact information in the Complaint.
The Center sent an email communication to the Complainant on June 5, 2024, 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 amendment to the Complaint on June 6, 2024. On June 7, 2024, the
Center requested the Complainant to review the Mutual Jurisdiction clause in the Complaint. On June 10,

2024, the Complainant filed an amended Complaint.

The Center verified that the Complaint together with the amendment to 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 June 12, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was July 2, 2024. Following the Respondent’s request for an automatic four-day

extension on June 20, 2024, the Response was due on July 6, 2024. The Response was received on
July 6, 2024.

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The Center appointed Steven A. Maier, Jonathan Agmon, and Matthew Kennedy as panelists in this matter on August 5, 2024. 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.

4. Factual Background

The Complainant is a manufacturing company located in Brazil. It specializes in steel cylinders, wheels, and galvanizing.

The Complainant is the owner of various registrations for the trademark MANGELS. Those registrations include, for example:

- Brazil trademark registration number 003837629 for the word mark MANGELS, registered on October 18,

1968, in national Classes 06.20, 06.30, and 06.70; and

- Brazil trademark registration number 006916392 for a combined mark comprising a black bar device and

the stylized word MANGELS, registered on April 25, 1979.

The Complainant operates a website at “ (although it makes no reference to that

website in the Complaint). It also owns domain names including, for example, <mangels.cn> and

<mangels.com.cn> (which are passively held).

The disputed domain name was registered on March 29, 2019.

It appears from the evidence available to the Panel that the Complainant was the owner of the disputed

domain name at some point prior to the Respondent’s registration. It is however unclear between what dates

the Complainant owned the disputed domain name or what use was made of it during that period.

It further appears from correspondence exhibited by the Complainant that, in April 2023, the Complainant made two offers, each equivalent to approximately USD 950, to purchase the disputed domain name via the

Registrar’s auction platform. Both offers were higher than the minimum offer shown at that time. In May

2023, the Complainant approached the Registrar asking for assistance in finalizing its purchase of the disputed domain name and seeking information on what had occurred with its automatic renewal. The

Registrar replied that the owner had not expressed any willingness to accept the Complainant’s offer of USD

950. The Complainant stated that it had omitted to double-check and that there had been a failure of
renewal and that it needed to recover the disputed domain name at the price that it had always paid. The
Registrar replied to the effect that the disputed domain name now belonged to a new owner and that the

Complainant would need to pay at least USD 61,750 should it wish to reacquire it. In February 2024, the

Registrar further explained that the Complainant’s prior registration had not lapsed due to non-payment of

renewal fees but rather, on January 21, 2019, a representative of the Complainant with account access

requested that “unwanted domains” be cancelled, following which the Registrar cancelled the disputed

domain name.

Since its registration by the Respondent, the disputed domain name has resolved to webpages indicating

that it is for sale. There is no evidence of pay-per-click (“PPC”) advertising or other revenue-generating

activities having been linked to those webpages.

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5. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in 1928 and currently employs over 1,700 individuals. It states (although without supporting evidence) that its products are of internationally-recognized quality and that it exports to Latin America, the Middle East, Africa, the Caribbean, and Europe.

The Complainant submits that the disputed domain name is identical to its MANGELS trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its MANGELS

trademark, that there is no evidence of the Respondent’s intent to use the disputed domain name in

connection with any bona fide offering of goods or services, and that the Respondent’s only use of the

disputed domain name has been to offer it for sale.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. registration would prevent the Complainant from reflecting its trademark MANGELS in the most desirable

top-level domain name. The Complainant points to the Respondent’s asking price of USD 61,000 [sic] for

the disputed domain name and to the fact that the Respondent has never used it in connection with any active website. The Complainant submits that Internet users will be confused into believing the disputed

domain name is associated with the Complainant, and that the Respondent’s inactive website therefore

tarnishes the reputation of its MANGELS trademark.

The Complainant contends, in particular, that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant, for valuable consideration in excess of its out-of-pocket costs associated with the disputed domain name.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent submits that it is a professional domain name investor with over 1,000 generic domain names under ownership (details of which are not provided).

The Respondent states that it purchased the disputed domain name at auction for a price of USD 2,956 because it is a short, memorable term with a market value in excess of USD 8,800. The Respondent

exhibits a “GoDaddy Domain Appraisal” of USD 8,816 (dated June 7, 2024) in this connection.

The Respondent submits that “mangels” is the plural form of a dictionary word, meaning a root vegetable

cultivated as a feed for livestock. It states that it is also a surname, and provides search-based evidence that
there are 1,276 people in the United States with the last name Mangels. The Respondent also provides
evidence of other entities making commercial use of the name MANGELS, including Mangels Vineyards and

Mangels Dynamic Learning Lab, both located in the United States. It also exhibits evidence of two third-

party United States trademarks for the mark MANGEL (one stylized as “mAngel”), and one which includes

the name MANGELS in the title of a law firm.

The Respondent submits that it, and other domain name dealers, have sold “comparable” domain names for

significant sums. It cites its own sales of single-word domain names including <hafnia.com> for USD 60,000

and <ethero.com> for USD 25,000. It also refers to its sales of “surname” domains including <vessi.com> for
USD 32,000 and <michelsen.com> for USD 12,500 (the Respondent’s evidence does not, however, show

either the seller or the buyer of any of these domain names). It further cites <majoris.com> and <nevis.com>, supposedly sold by third parties for USD 130,000 and USD 100,000 respectively.

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The Respondent asserts that it had “zero knowledge” of the Complainant until the commencement of this

proceeding. It produces evidence that the first page of Google search results against the term “mangels”

does not include the Complainant. It also asserts that a search in the United States Patent and Trademark

Office did not produce any results for MANGELS referable to the Complainant, and that the Respondent was

not aware of the Complainant’s trademarks, which are non-exclusive and for a narrow class of goods and

services, in other territories.

The Respondent submits that it offered the disputed domain name for sale in accordance with its usual
business activities, without targeting the Complainant and without interfering in any manner with its business.
It points out that, having failed to re-register the disputed domain name, the Complainant could have bid for it
at the auction in which the Respondent obtained it for USD 2,956. It states that its original asking price of
USD 61,000 [sic] was a starting point in negotiations, and that the Complainant appears to have made no
attempt to establish the market value of the disputed domain name or to make any counter-offer to the

Respondent, preferring to institute this proceeding rather than pay a price for the disputed domain name.

The Respondent requests that the Complaint be denied, and that a finding of Reverse Domain Name

Hijacking (“RDNH”) be made against the Complainant.

6. Discussion and Findings

In order to succeed with the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights in respect of the word mark MANGELS. The disputed domain name is identical to that trademark, ignoring the generic Top-Level

Domain (“gTLD”) “.com”, which may be disregarded for the purpose of the relevant comparison. The Panel

therefore finds that the disputed domain name is identical to a trademark in which the Complainant has

rights.

B. Rights or Legitimate Interests

In the light of its conclusions under the third element of the Policy, below, the Panel does not consider it necessary or appropriate to reach a determination under the second element in this case.

C. Registered and Used in Bad Faith

In order to satisfy the third element under the Policy, the Complainant must establish the conjunctive requirement that the Respondent both registered and is using the disputed domain name in bad faith.

In order to demonstrate, first, that the Respondent registered the disputed domain name in bad faith, the when it registered the disputed domain name, and did so in order to take unfair advantage of the commercial

goodwill attaching to that trademark, in other words, “targeting” the Complainant’s trademark rights.

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The Panel finds there to be neither evidence, nor matters to support the drawing of any inference, of such

knowledge and targeting in this case. The Complainant’s trademark MANGELS, while somewhat distinctive,

is not unique to the Complainant, and that name is in legitimate use by other parties both in the course of

trade – though this would not necessarily assist the Respondent if it were targeting any of those brand
owners - and as a personal surname. The Complainant’s trademark registrations are of limited geographical

scope and the Complainant provides no evidence of the reputation and public profile of that trademark, nor any grounds on which to conclude that the Respondent was, or ought to have been, aware of its trademark when it registered the disputed domain name. The Respondent, for its part, explains its rationale for its

purchase and its offer to sell the domain name, comprising matters unrelated to the Complainant’s

trademark. While the Respondent’s initial asking price for the disputed domain name of USD 61,750

appears high, the Respondent has again provided an explanation, and the Panel does not find this factor to
be persuasive that the Respondent registered the disputed domain name with the intention of selling it to the

Complainant (or a competitor of the Complainant) in particular.

In the circumstances, the Complainant has not met the burden of demonstrating, on the balance of

probabilities, that the Respondent registered the disputed domain name with knowledge of the Complainant’s

trademark and in order to target that trademark. The Complaint must fail accordingly.

While it is strictly unnecessary in view of the conjunctive requirement to consider the Respondent’s use (as

opposed to registration) of the disputed domain name, the Panel observes that, for similar reasons as set out above, it finds no evidence or circumstances upon which to infer that the Respondent has used the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at RDNH or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute RDNH (see e.g. section 4.16 of WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, it is apparent that the Complainant failed to renew its own registration of the disputed domain name (and may even have requested that its registration be canceled), before seeking to have it reinstated after the Respondent had registered it. The Complainant appears to have made initial offers in the region of USD 950 to purchase the disputed domain name from the Respondent, but upon being informed of the

Respondent’s asking price, it appears that the Complainant elected instead to commence this proceeding,

asserting that the Respondent had registered and used the disputed domain name in bad faith.

In the view of the Panel, for the reasons set out in section C above, the Complaint discloses no reasonable grounds to allege that the Respondent registered and had used the disputed domain name in bad faith. Instead, it appears to the Panel that, having failed to re-register the disputed domain name, and having had its offers to repurchase it for sums in the region of USD 950 rejected, the Complainant elected to bring the proceeding in an attempt to obtain the disputed domain name.

While in some circumstances an unrepresented party may be excused from having commenced proceedings in such circumstances, the Complainant is legally represented in this case and should have been advised that its claim had no reasonable prospect of succeeding.

While the Panel notes that the Registrar referred to proceedings under the UDRP in its reply to the Complainant dated February 2024, this did not override the duty of the Complainant, as legally advised, to ensure that there were reasonable grounds for commencing the proceeding and that the proceeding did not represent an abuse of process.

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The Panel finds in the circumstances that the Complaint was brought in bad faith, for example in an attempt at RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied. Moreover, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.

/Steven A. Maier/

Steven A. Maier

Presiding Panelist

/Jonathan Agmon/

Jonathan Agmon

Panelist

/Matthew Kennedy/

Matthew Kennedy

Panelist
Date: August 19, 2024