Kevac.com, a domain name registered in 2009, was hit with a UDRP. The Complainant is Kevac S.r.l, Italy, represented by LS LexJus Sinacta.
The Respondent was represented by Muscovitch Law P.C., Canada.
In this UDRP, the Complainant claimed that their trademarks from 2012 are sufficient to pursue the transfer of the domain, as the company was founded in 2007.
In 2019, the Complainant offered 2,000 euro to the Respondent, who was seeking $75,000 dollars for Kevac.com.
The Respondent pointed out that the domain was registered before the Complainant’s trademark:
“The Respondent denies having registered the disputed domain name in bad faith. The Respondent notes that the Complainant’s earliest trademark registration was applied for in Italy in 2012, more than three years after the disputed domain name was registered. “
The three member panel at the WIPO denied transfer of the domain Kevac.com and also found the Complainant guilty of engaging in a Reverse Domain Name Hijacking attempt.
Full details follow:
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ADMINISTRATIVE PANEL DECISION
Kevac S.r.l v. Eweb Development Inc.
Case No. D2019-29911. The Parties
The Complainant is Kevac S.r.l, Italy, represented by LS LexJus Sinacta – avvocati e commercialisti, Italy.
The Respondent is Eweb Development Inc., Canada, represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <kevac.com> is registered with Alpine Domains Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. On December 17, 2019, the Center received a request from the Respondent for an extension to the Response filing period pursuant to paragraphs 5(b) and 5(e) of the Rules. Pursuant to paragraph 5(b) of the Rules, the Center notified the Parties on December 18, 2019, that the Response deadline had been extended to January 5, 2020, and requested the Complainant to submit its comments regarding the Respondent’s request for an additional 14 days to file the Response. On December 19, 2019, the Complainant informed the Center that it did not object to the Respondent’s request for an additional 14 days. On December 19, 2019, pursuant to paragraph 5(e) of the Rules, the Response deadline was extended to January 20, 2020. The Response was filed with the Center on January 17, 2020.
The Center appointed Jane Seager, M. Scott Donahey, and The Hon Neil Brown QC as panelists in this matter on February 20, 2020. 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
Founded in 2007, the Complainant is an Italian company engaged in the manufacturing of industrial vacuums. For use in connection with its vacuum products, the Complainant has registered, inter alia, the following trademarks:
– Italian Trademark Registration No. 0001598292, KEVAC, filed on July 11, 2012, and registered on June 11, 2014.
– European Union Trade Mark Registration No. 011035078, filed on July 12, 2012, and registered no May 8, 2014;
– International Trademark Registration No. 1136142, KEVAC, registered on July 13, 2012, designating Australia, China, Japan, the Republic of Korea, the Russian Federation, Turkey, and the United States of America (“United States”);
– United States Trademark Registration No. 4412737, KEVAC, filed on July 13, 2012, and registered on October 8, 2013; and
– Canadian Trademark Registration No. TMA904061, KEVAC, registered on May 20, 2015.
The Complainant is also the registrant of numerous domain names comprising its KEVAC trademark, including <kevac.eu> (registered on January 27, 2007), <kevac.it> (registered on January 30, 2007), <kevac.fr> (registered on January 14, 2008), and <kevac.es> (registered on April 16, 2008). These domain names redirect to the Complainant’s official website at “www.kevac-vacuuming-industry.com”.
The Respondent is a Canadian company providing website development, website hosting, and branding services. The Respondent registers and maintains a portfolio of domain names for the purpose of reselling such domain names to Internet users, with or without an accompanying website.
The disputed domain name was registered on April 14, 2009. The disputed domain name resolves to a web page (the “Respondent’s website”) stating:
“eWEB DEVELOPMENT
Kevac.com
READY FOR DEVELOPMENT
If you’re interested in this domain, contact us to check availability for ownership, customer use, partnership or other development opportunities.”The Respondent’s website includes a contact form for Internet users to make inquiries about the disputed domain name. The Respondent’s website also includes general information about the web services provided by the Respondent.
Pre-Complaint communications between the Parties may be summarized as follows:
– On June 19, 2019, the Complainant contacted the Respondent requesting a quote for purchase of the disputed domain name.
– The Respondent replied on June 19, 2019, stating that the purchase price for the disputed domain name was USD 75,000, or alternatively, the disputed domain name could be purchased by making 91 monthly payments of USD 999 (totaling USD 90,909).
– On July 16, 2019, the Complainant sent the Respondent a letter putting the Respondent on notice of its KEVAC trademarks, indicating that it was willing to purchase the disputed domain name for EUR 2,000.
– The Respondent replied the same day, requesting further information regarding the Complainant’s trademark rights.
– On July 17, 2019, the Complainant sent a further email to the Respondent, inviting the Respondent to check the Complainant’s trademark registrations by searching online trademark databases, and asserting that the Respondent’s offer was unreasonable and in bad faith.
– On July 18, 2019, the Respondent replied, noting that the registration of the disputed domain name substantially pre-dated the registration of the Complainant’s trademark, warning the Complainant that legal action to recover the disputed domain name via the UDRP would likely result in a finding of Reverse Domain Name Hijacking (“RDNH”), and referring to prior UDRP decisions in which the Respondent had successfully defended its domain name registrations.
– On July 30, 2019, the Complainant replied to the Respondent, rejecting the Respondent’s assertion regarding attempted RDNH. The Complainant claimed that its business had been known internationally since before 2009, and reiterated its assertion that the Respondent’s offer was unreasonable and in bad faith. The Complainant further requested to purchase the disputed domain name for EUR 2,000, stating that, in the absence of an agreement, it would be forced to bring legal action against the Respondent.
– The same day, the Respondent replied stating that it was not interested in the Complainant’s offer, and that it would take necessary steps to defend its registration of the disputed domain name and protect its rights.
The Parties were unable to reach an agreement.
5. Parties’ Contentions
A. Complainant
The Complainant asserts rights in the KEVAC trademark in the form of registered trademark rights, dating from 2012 onwards. The Complainant also claims to have unregistered trademark rights dating from 2007. In this regard, the Complainant asserts that since 2007, it has been trading under the “Kevac” name, and that the KEVAC trademark has been used extensively to advertise the Complainant’s goods. The Complainant claims that the KEVAC trademark is well known in the cleaning industry, and that it has become a distinctive identifier which consumers associate with the Complainant’s goods. In support of the above, the Complainant makes reference to having registered several domain names comprising its KEVAC trademark, dating from 2007. The Complainant also refers to having attended the International Sanitary Supply Association (“ISSA”) exhibition since 2008, as well as other internationally-renowned events in the cleaning industry. The Complainant submits that the disputed domain name is identical to the Complainant’s KEVAC trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent is in the business of investing and trading in domain names, and that the Respondent has accumulated a substantial catalogue of domain names for the purpose of reselling them. The Complainant further argues that the Respondent’s only purpose in registering the disputed domain name was to sell it. The Complainant submits that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent has not been commonly known by the disputed domain name. In this regard, the Complainant notes that the Respondent does not hold any trademarks for the term “kevac”, and that the disputed domain name does not comprise any commonplace or dictionary terms. The Complainant asserts that “kevac” is unique, and has no meaning in the English language.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant for an amount in excess of the Respondent’s out-of-pocket costs associated with the disputed domain name. The Complainant makes reference to its pre-Complaint correspondence with the Respondent as evidence of the Respondent’s intent to profit from the sale of the disputed domain name to the Complainant. The Complainant asserts that the Respondent knew or should have known of the Complainant’s trademarks and domain names when the Respondent registered the disputed domain name as the Complainant had been in business for a considerable number of years. The Complainant argues that the conduct of the Respondent is in bad faith, irrespective of whether the Complainant had accrued trademark rights prior to the registration of the disputed domain name. The Complainant makes reference to the warranties contained in paragraph 2 of the Policy, specifically that “[the Respondent] will not knowingly use the domain name in violation of any applicable laws or regulations”. The Complainant argues that even though a party may register or acquire a domain name in good faith, if it uses the domain name in such a way to so as to call into question the party’s compliance with its representations under paragraph 2 of the Policy, there may be a finding of registration and use in bad faith. The Complainant submits that use of a domain name in bad faith may render the registration in bad faith, and that the concept of bad faith should be considered as a unitary concept, citing City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786; Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278; and, Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001. The Complainant asserts that whatever the Respondent’s motives at the time of registering the disputed domain name, the Respondent has been acting in bad faith within the meaning of paragraph 4(b)(i) 1 of the Policy as the Respondent has held the disputed domain name for the purpose of selling it for more than the Respondent’s out-of-pocket costs.
The Complainant requests transfer of the disputed domain name.
B. Respondent
The Respondent acknowledges that the Complainant has registered trademark rights for KEVAC.
The Respondent submits that it has rights or legitimate interests in the disputed domain name. The Respondent explains that it operates a business relating to website development, website hosting, and branding. The Respondent asserts that it registers domain names that are surnames, descriptive, unique and brandable, acronyms, or are otherwise non-infringing. The Respondent explains that it offers a service whereby a customer can purchase a domain name, or may purchase a website-development package along with a domain name. The Respondent allows potential customers to make contact via its website to inquire whether a particular domain name is available for purchase or use. The Respondent contends that its legitimate interest in the disputed domain name stems from the Respondent being the first person to register the disputed domain name at a time when there were no competing trademark rights in existence. The Respondent further argues that it has used the disputed domain name, as understood by the Policy, for email and hosting a website advertising the Respondent’s web services, and to offer the disputed domain name for sale. The Respondent therefore asserts that prior to notice of the present dispute, it had made use of the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent denies having registered the disputed domain name in bad faith. The Respondent notes that the Complainant’s earliest trademark registration was applied for in Italy in 2012, more than three years after the disputed domain name was registered. The Respondent asserts that the Complainant has failed to provide evidence, such as sales figures, revenue, advertising budgets, media reports, or consumer awareness surveys, which would support a finding of unregistered rights on the part of the Complainant in “kevac”. Rather, at the time that the disputed domain name was registered, the Complainant has merely provided evidence that it registered a number of “kevac”-formative domain names, and that it had attended two cleaning industry exhibitions in Italy. The Respondent argues that the mere registration of domain names does not alone establish unregistered rights, that at the time that the disputed domain name was registered, the Complainant operated a rudimentary website at “www.kevac.eu”, and that the Complainant’s attendance at cleaning industry exhibitions in Italy in 2008 is not probative of the Complainant’s unregistered rights at that time. In light of the modest size of the Complainant’s company, the Respondent submits that there is no factual basis upon which to conclude that the Complainant was known or ought to have been known by the Respondent at the time that the disputed domain name was registered.
Further to the above, the Respondent denies having used the disputed domain name in bad faith. The Respondent contends that there is no evidence of infringement, passing off, or any other abusive use whatsoever. The Respondent claims that it registered the disputed domain name because it was a non-infringing, made-up word that lent itself to being adopted as a new brand by someone wanting an online presence, and further notes that it may correspond to a Slavic surname. The Respondent provides evidence that in the days prior to registering the disputed domain name, it had registered a number of other five-character, made-up domain names. The Respondent submits that its offer to sell the disputed domain name is not evidence of bad faith, but rather a legitimate effort to sell property owned by the Respondent. In this regard, the Respondent again notes that it was the Complainant who first approached the Respondent, and contends that the Complaint has been brought without any evidence of targeting or awareness of the Complainant on the part of the Respondent.
The Respondent requests that the Panel make a finding of RDNH. The Respondent notes that the Complainant engaged the Respondent’s services when it contacted the Respondent to purchase the disputed domain name in June 2019. In doing so, the Complainant completed the Respondent’s online questionnaire, and agreed to the Respondent’s “Terms of Quote Request”, in which it warranted that it was not claiming any right, title, or interest in or to the disputed domain name, that it did not intend to commence any proceedings to challenge the Respondent’s rights to the disputed domain name, and that reneging on its representations would constitute RDNH. The Respondent states that it relied on the Complainant’s representations when it provided the requested quote for the sale and purchase of the disputed domain name. The Respondent asserts that the Complainant’s evidence in support of its Complaint is incomplete, namely that it did not provide the full correspondence related to its attempt to purchase the disputed domain name, and that the Complainant has therefore misrepresented the events upon which the Complaint itself was initiated. The Respondent submits that the Complainant should have known that its Complaint was fatally weak due to the complete absence of any targeting of the Complainant by the Respondent. The Respondent further submits that the Complainant has disregarded settled UDRP precedent regarding bad faith registration, and that the Complainant has attempted to misuse the Policy to obtain the disputed domain name after failing to do so in the marketplace.
6. Discussion and Findings
In order to prevail under the Policy, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(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 the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark KEVAC by virtue of its various trademark registrations, the details of which are provided in the factual background section above. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2, the date of registration and date of first claimed use are not considered relevant to the first element test. The question of the Complainant’s unregistered trademark rights will be examined under the second and third elements.
The disputed domain name comprises the Complainant’s KEVAC trademark in its entirety without addition or alteration. The generic Top-Level Domain “.com” may be disregarded for the purpose of analysis under the first element; see WIPO Overview 3.0, section 1.11.1.
The Panel finds the disputed domain name to be identical to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted in WIPO Overview 3.0, section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
As a preliminary matter, there is no evidence to suggest that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Nor can the Respondent be said to be making a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.
The essence of the Complainant’s case is that the Respondent’s registration of the disputed domain name for the purposes of resale does not confer rights or legitimate interests in the disputed domain name on the Respondent, but rather represents an illegitimate use of the disputed domain name.
Conversely, the Respondent’s position is that it operates a bona fide IT business of registering non-infringing domain names (i.e., domain names that are surnames, descriptive, acronyms, or otherwise made-up) and website development, and that it has made a bona fide offering of goods or services via the disputed domain name by hosting a website at the disputed domain name that advertises the Respondent’s web development and branding services, and offers the disputed domain name for sale.
Prior UDRP panels have acknowledged that aggregating and holding domain names (including for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP; see WIPO Overview 3.0, section 2.1.
In the present case, the disputed domain name does not appear to correspond to any widely-known acronym, dictionary word, or common phrase. In determining whether the Respondent can be said to have any rights or legitimate interests in the disputed domain name, the Panel notes that there is no evidence to suggest that the Respondent registered the disputed domain name as a pretext for commercial gain by trading off the goodwill associated with the Complainant’s trademark. As set out in more detail under the Panel’s discussion on bad faith below, the Complainant has not produced any conclusive evidence to suggest that the Respondent has sought to target the Complainant in any way. It is clear, from the contents of the Respondent’s website that it is not a website operated by the Complainant. While the Respondent does maintain a substantial portfolio of domain names, the Complainant has not produced evidence to suggest that the Respondent is engaged in a pattern of registering domain names corresponding to the Complainant’s trademark or to third-party trademarks. If anything, the domain names that the Respondent routinely registered and offered for sale could be deemed “nonsense words”. In addition, the evidence on record suggests that the Respondent’s registration and use of the disputed domain name in the manner described above is consistent with the Respondent’s genuine offering of IT-related web development services. There is nothing on record to suggest that the Respondent’s business is in any way illegitimate.
In light of the factors set out above, and weighing the evidence produced by both Parties, the Panel concludes that the Complainant has failed to establish, on the balance of probabilities, that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. The Complaint accordingly fails.
C. Registered and Used in Bad FaithFor completeness, and in light of the assertions of both Parties, the Panel considers it appropriate to reach a conclusion as to the question of bad faith.
The disputed domain name was registered on April 14, 2009. The Complainant first filed for registration of its KEVAC trademark on July 11, 2012, i.e., over three years later.
As noted in WIPO Overview 3.0, section 3.8, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. This well-established position is subject to limited exceptions, where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights.
The Complainant asserts that by the time the disputed domain name was registered, the Complainant had been trading under the “Kevac” name and had advertised its brand such that “Kevac” had become a distinctive identifier which consumers associated with the Complainant’s goods. The Respondent on the other hand denies knowledge of the Complainant at the time that the disputed domain name was registered.
The Panel accepts the Respondent’s assertion that registration of “kevac”-formative domain names does not by itself confer unregistered trademark rights on the Complainant. The Panel does not consider the Complainant’s evidence of attendance at two cleaning industry exhibitions in Italy in 2008 to be probative evidence that the Complainant had become well established in the industry such that the Respondent knew or should have known of the Complainant in 2009. As noted by the Respondent, the Complainant’s evidence of its attendance at such events is not clear on whether the Complainant was in fact an exhibitor, nor does it demonstrate the Complainant’s level of engagement with the relevant public. Notably absent from the record is any evidence of sales figures of the Complainant’s products, or evidence of the Complainant advertising its products under the “Kevac” name in the period between 2007 and 2009.
Based on the evidence before the Panel, there does not appear to be any evidence to suggest that the Respondent registered the disputed domain name in order to take unfair advantage of any then-unregistered trademark rights that the Complainant may have had.
The Panel further considers the Complainant’s reliance on the cases City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, supra; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, supra; Ville de Paris v. Jeff Walter, supra; and, Jappy GmbH v. Satoshi Shimoshita, supra, to be misguided. As a preliminary matter, subsequent UDRP panels have not applied the concept of so-called “retroactive” bad faith in interpreting respondent’s representations and warranties under paragraph 2 of the Policy. The overwhelming approach of UDRP panels considering the above-cited cases since then has been to affirm the literal meaning of paragraph 4(a)(iii) of the Policy and to require bad faith at the time of registration or acquisition of the disputed domain name; see TOBAM v. M. Thestrup / Best Identity, WIPO Case No. D2016-1990, and cases cited therein. Even if the Panel were to take the view that the Respondent’s renewal of the disputed domain name somehow constituted a new registration, which it certainly does not, the Respondent’s consistent use of the disputed domain name as described above does not in any way support a finding that the Respondent has sought to target the Complainant.
Finally, the Panel does not consider the Respondent’s offer to sell the disputed domain name to the Complainant to amount to bad faith pursuant to paragraph 4(b)(i) of the Policy. As noted in WIPO Overview 3.0, section 3.1.1, UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner. For reasons already set out above, the record is lacking of any conclusive evidence that would in any way indicate that the Respondent’s intent to register the disputed domain name was to profit from or to otherwise exploit the Complainant’s trademark.
The Panel finds that the Complainant has not established that the disputed domain name was registered in bad faith. The Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking (“RDNH”)
The Respondent argues that the Complaint constitutes a misuse of the Policy and requests the Panel to enter a finding of RNDH.
Paragraph 1 of the Rules defines RDNH as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Relevant factors that may support a finding of RDNH include: facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements, including clear knowledge of a lack of respondent bad faith such as registration of the disputed domain name well before the complainant acquired trademark rights; facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint; the provision of intentionally incomplete material evidence; or filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis; see WIPO Overview 3.0, section 4.16.
Having considered the evidence on record, the Panel is of the view that it was clear from information reasonably available to the Complainant at the time of filing that the Complainant could not prove the Respondent’s bad faith registration of the disputed domain name. Indeed, in pre-Complaint communications with the Respondent, the Respondent clearly indicated prior cases in which the Respondent had successfully defended its domain name registrations involving domain names registered in similar circumstances as those of the present case; see, e.g., Obero Inc. v. Domain Manager, eWeb Development Inc., WIPO Case No. D2016-2591. The Complainant appears to have adopted arguments contrary to a plain reading of the Policy. While the Panel does not draw a conclusion as to the Respondent’s “Terms of Quote Request”, or to what extent those terms would be binding on the Complainant, it does appear that the Complainant misrepresented its position to the Respondent in its attempt to purchase the disputed domain name, and provided a somewhat incomplete account of the pre-Complaint communications with the Respondent in the Complaint itself, with additional information brought to light by the Respondent. In the circumstances, the Panel considers that the Complaint was brought in an attempt to wrest the disputed domain name from the Respondent following a failed attempt to buy it. The Panel concludes that the Complaint was brought in bad faith in an attempt at RDNH and constitutes an abusive of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
Jane Seager
Presiding PanelistM. Scott Donahey
Panelist (Concurring)The Hon Neil Brown QC
Panelist
Date: March 11, 2020Concurring Opinion of M. Scott Donahey
The decision in this case suggests that the decision would not be different if one were to rely on the decision in Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc./ Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786. This assumption is correct.
The essence of the Octogen decision is as follows:
“[T]hree of the four non-exclusive UDRP examples of bad faith registration and use do not discuss use at all, but rather focus on the state of mind of the registrant at the time that it registered the domain name at issue. Conversely, the fourth example focuses entirely on use without express regard to the registrant’s state of mind as of the date of registration. Under paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its website or online location by creating a likelihood of confusion with the complainant’s mark and its sponsorship of the website is acting in bad faith, without reference to the respondent’s state of mind at the time that the registrant registered the domain name. Clearly, as under the Telstra analysis, in this Panel’s view bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder, just as bad faith use can occur without regard to the fact that the domain name at issue has not been (or has been ‘passively’) used.
Moreover, panels, including this Panel, should be mindful of the language of the Policy regarding the respondent’s representations and warranties. This language negates the temporal distinction suggested by 4(a)(iii) of the Policy (‘has been registered . . . in bad faith’) by requiring the registrant to make warranties as to the registrant’s future conduct. Section 2 of the Policy, entitled ‘Your Representations’, provides in pertinent part: ‘[Y]ou will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.’ (Emphasis added.)
As this Panel sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”
In the present case, at no point did Respondent’s use of the domain name target Complainant’s trademark use. Respondent did not target Complainant’s business (vacuum manufacturing and sales) or attempt to target Complainant as a prospective purchaser of the domain name based on Complainant’s business or marks. It listed the domain name among the other domain names that Respondent offered for sale. Complainant contacted Respondent regarding the potential purchase of the domain name. Respondent replied with a price for a present purchase and a price for a purchase over time. Following Respondent’s quotation, it was Complainant who informed Respondent of Complainant’s trademark rights. Respondent made no attempt to change its offer to sell the domain name to Complainant or to increase the amount requested to reflect the fact that the domain name corresponded to Complainant’s trademark. When Complainant made an offer to Respondent that was considerably lower than the amount Respondent had previously requested, Respondent merely declined the offer. Respondent did not increase the price it had previously requested with the acquired knowledge of Complainant’s trademarks. It merely continued its business practice of offering for sale at a fixed price sequences of letters that were not readily identifiable as words or names. Since Complainant never targeted Respondent to seek to profit from whatever value Respondent had created through the use of its mark, under the Octogen analysis the decision would be the same.
I concur in the decision.
M. Scott Donahey
Panelist (concurring)
Date: March 11, 20201 The Panel notes that the Complainant itself refers to paragraph 4(b)(iv) of the Policy. The Panel understands this to be a misquote on the part of the Complainant, as in the same sentence the Complainant goes on to quote the language of paragraph 4(b)(i) of the Policy.
