Beaumont.com is a geo-domain registered in 1995. Its registrant has been using it consistently selling religious medals.
A Dutch company, Stone Fashion Group B.V., filed a UDRP at the WIPO and attempted to get the domain based on its history, which they claim that it stretches back 45 years.
The WIPO panelist found that the domain predates an actual registration mark (2007) that the Complainant presented, by more than a decade:
“The Respondent registered the Disputed Domain Name on December 22, 1995. The Trade Mark was registered on September 10, 2007. This post-dates the registration of the Disputed Domain Name by more than 10 years. Where a domain name has been registered before a complainant has acquired trade mark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith”
Despite a lack of response by the Respondent, the decision was thus made to deny transfer of the domain to the Complainant.
The domain transfer was denied.
Full details of this decision follow:
Stone Fashion Group B.V. v. John James Broderick and or Jeanne Broderick Shelton
Case No. D2019-18881. The Parties
The Complainant is Stone Fashion Group B.V., Netherlands, represented by Dillinger Law B.V., Netherlands.
The Respondent is John James Broderick and/or Jeanne Broderick Shelton, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <beaumont.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 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 August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2019.
The Center appointed John Swinson as the sole panelist in this matter on September 13, 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 is Stone Fashion Group B.V., a company incorporated in the Netherlands. The Complainant runs an Amsterdam based outerwear brand that, according to the Complainant, has a history spanning more than 45 years.
The Complainant is the registered owner of various registered trade marks, including international registered trade mark number 950001, registered on September 10, 2007 (the “Trade Mark”). The Complainant is also the owner of a domain name which incorporates the Trade Mark, being <beaumont.eu>.
The Respondent is John James Broderick and /or Jeanne Broderick Shelton, individual(s) of the United States. No response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on December 22, 1995. At present, the Disputed Domain Name resolves to a website which offers religious medals for sale.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety.
Rights or Legitimate Interests
The Respondent has never received permission from the Complainant and there is no business or other relationship between the Parties. There is no indication the Respondent used the term “Beaumont” in the Disputed Domain Name in connection with a bona fide intention to offer goods or services or made demonstrable preparations for this.
The Respondent is not commonly known by the Disputed Domain Name. The Respondent has no trade mark rights and it is not the name of the Respondent.
The Respondent has made no attempt to use the Disputed Domain Name for any legitimate business purpose. The Respondent uses the Disputed Domain Name to offer religious medals for sale. When an Internet user proceeds to order a medal, the user is redirected to “www.broderickshoppingcart.com”. The content at the Disputed Domain Name has no connection with the Complainant and there is no reason for the Respondent to keep the Disputed Domain Name.
The Complainant has been known as BEAUMONT for many years. BEAUMONT is an Amsterdam based outerwear brand that has a history spanning more than 45 years and is available in boutiques and department stores across Europe.
It is not clear why the Respondent has registered such a large number of domain names. The Complainant can draw no other conclusion than that the Respondent has made its business of registering and selling domain names for profit. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent intends to mislead consumers or damage the Trade Mark for misleading commercial gain.
Registered and Used in Bad Faith
The Disputed Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. This is based on the following:
– the Respondent requested an amount of USD 2,000,000 in return for the transfer of the Disputed Domain Name. This is considerably higher than the out-of-pocket costs. The Respondent has stated that he has incurred USD 15,000 in costs since registering the Disputed Domain Name (although this seems high); and
– the Respondent has registered a large number of domain names.
The Complainant has the better right to the Disputed Domain Name. Given the brand awareness that the Complainant has acquired, persons wanting to gather information about the Complainant or its goods will search for the word “Beaumont”. The Respondent has no interest in keeping the Disputed Domain Name. When visiting the website at the Disputed Domain Name, an Internet user is linked to another webshop of the Respondent. This causes financial and reputational harm to the Complainant as visitors will associate the Trade Mark with the Disputed Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The fact that the Disputed Domain Name was registered before the Complainant’s Trade Mark does not preclude a finding of identity or confusing similarity (see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”)).
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
– The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a website offering various religious medals for sale. The Complainant submits that the Trade Mark is used in the Disputed Domain Name without valid reason, and the content at the Disputed Domain Name is not connected to the word “Beaumont” or the Complainant. The Complainant also relies on the fact that an Internet user who proceeds with the process of ordering a religious medal is redirected to a shop under a different domain name, being <broderickshoppingcart.com>.
– The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
– There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
– The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name carries a high risk of implied affiliation (see section 2.5.1 of WIPO Overview 3.0), and the website at the Disputed Domain Name offers goods for sale, which presumably generates revenue for the Respondent.
It is possible that the Respondent could have established rights or legitimate interests based on its long-standing jewelry business (see below). However, the Respondent has not provided a Response. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant submits that the Respondent registered or acquired the Disputed Domain Name primarily to sell it to the Complainant (or its competitor) for valuable consideration in excess of the Respondent’s costs (see paragraph 4(b)(i) of the Policy). The Complainant relies on the following facts:
– the Respondent offered to sell the Disputed Domain Name to the Complainant for USD 2,000,000;
– the Respondent has registered a large number of domain names;
– the Complainant has a better right to the Disputed Domain Name;
– the Respondent has no interest in the name “Beaumont”, and the website at the Disputed Domain Name has nothing to do with the word “Beaumont”, because it links to another webshop of the Respondent.
Registered in bad faithThe Respondent registered the Disputed Domain Name on December 22, 1995. The Trade Mark was registered on September 10, 2007. This post-dates the registration of the Disputed Domain Name by more than 10 years. Where a domain name has been registered before a complainant has acquired trade mark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith (see sections 1.1.3 and 3.8 of the WIPO Overview 3.0). An exception to this general position is where the Complainant can establish that the Respondent’s intent in registering the domain name was to unfairly capitalise on the complainant’s nascent (typically as yet unregistered) trade mark rights (see section 3.8.2 of WIPO Overview 3.0).
According to the Complainant, the BEAUMONT brand has existed for “more than 45 years”. However, beyond these statements and a screenshot of the Complainant’s website (which contains a similar statement), the Complainant has not provided any evidence of its reputation (internationally or in the United States) at the time of registration of the Disputed Domain Name, such that the Panel can conclude that the Complainant was sufficiently well known such that the Respondent would have been targeting the Complainant. The Complainant did not provide any sales figures, evidence of advertising or any other evidence of fame or recognition of the BEAUMONT brand in 1995. The fact that the Disputed Domain Name was registered before Google (which started in around 1998) also makes it difficult for the Panel to infer that the Respondent knew or should have known of the Complainant at the time he registered the Disputed Domain Name.
This failure to adduce evidence might not have been as significant had the word “Beaumont” been a coined word (see Billy Bob’s Texas IP Holding LLC v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1221). However, the word “Beaumont” is not particularly distinctive – it is a last name, and also the name of a city in Texas, United States, where the Respondent apparently resides. According to the Panel’s limited independent research, there are also numerous other brands operating under the name “Beaumont”, including Beaumont Tiles in Australia. The Complainant relies on the fact that the Respondent has registered multiple domain names as an indicator of bad faith, but some of these domain names are in fact also geographical terms, including <northtexas.com> and <northdallas.com>. A number of these domain names also have a plausible connection to the sale of religious medals, such as <stteresamedals.com> and <stmichaelmedals.us>. Even if the Disputed Domain Name was registered for a possible subsequent resale, this does not by itself support a claim that the Respondent registered the Disputed Domain Name in bad faith with the primary purpose of selling it to the Complainant (see section 3.1.1 of WIPO Overview 3.0).
The Panel also notes the following (as mentioned above):
– The Respondent operates a long standing jewelry business in Texas (see “www.broderick.com/us/about.htm”).
– Beaumont is a city in Texas.
– The Respondent owns other domain names for geographical places in Texas.
Accordingly, it seems more likely than not that the Respondent did not register the Disputed Domain Name to trade off the Complainant’s reputation or to sell to the Complainant.
The Panel finds that in the present case, the Complainant has failed to show that the Respondent had any bad faith intention when registering the Disputed Domain Name. No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877, and Sheryl Sandberg & Dave Goldberg Family Foundation v. WhoisGuard, Inc. / Hecham Ghazal, WIPO Case No. D2019-0213).
Used in bad faithWhilst not strictly necessary, the Panel will also consider the use of the website at the Disputed Domain Name.
According to the Complainant, the Respondent offered to sell the Disputed Domain Name for USD 2,000,000. The Panel accepts that this is likely to be well in excess of the Respondent’s out-of-pocket costs related to the Disputed Domain Name, and can be evidence of bad faith. However, an offer to sell does not in itself constitute bad faith (see Japan Airlines Company Limited v. TransHost Associates, JAL Systems and John A Lettelleir, WIPO Case No. D2000-0573). This is so even where it is offered a high price (Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493). It also appears from the evidence that this offer may have been solicited by the Complainant, and the Complainant does not assert otherwise.
The Panel also notes that the Disputed Domain Name resolves to a website that appears to be genuinely used by the Respondent (to sell religious medals). The website does not target the Complainant in any way and the Complainant’s Trade Mark does not appear on the website. There is no evidence that the Respondent is trying to trade off the Complainant’s reputation. The fact that the purchasing page redirects to a different website operated by the Respondent is not by itself evidence of use in bad faith.
In light of the above, the Panel finds that the Complainant does not succeed on the third element of the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: September 27, 2019
