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#LoveAndGreen .com : Generic #domain lost via the #UDRP process

ZFBot

If you register generic-sounding domain names, such as LoveAndGreen.com, there’s still a chance that they infringe on existing marks.

Love & Green of Lyon, France, filed a UDRP against the domain’s registrant, citing an existing range of marks for LOVE & GREEN.

It’s obvious that the ampersand symbol cannot be used in domain name registrations, however, the substitution with the “and” word can achieve the same effect.

The Respondent in this UDRP claimed that the domain is generic and does not infringe on the Complainant’s mark. Dr. Clive N.A. Trotman, sole panelist at the WIPO, disagreed with this logic, citing the following:

“The Complainant’s position in terms of bad faith, in part, is that the Respondent could not have been unaware of the Complainant’s highly unusual trademark, or ought to have found it with an Internet search, and that the attempt to sell the disputed domain name to the Complainant, for a price revealed in email correspondence to be USD 6,499, was itself indicative of bad faith.”

It’s interesting to point out that the Respondent cited several related domains in their attempt to prove the domain is generic; in doing so, they provided domain names belonging to the Complainant’s officers!

End result: transfer the domain LoveAndGreen.com to the Complainant. Full details of this decision follow:

Love & Green – Brand of Complainant.

Love & Green v. Hola Domains, Hola Dominios Limitada
Case No. D2019-0496

1. The Parties

The Complainant is Love & Green of Lyon, France, represented by CABINET STRATO-IP, France.

The Respondent is Hola Domains, Hola Dominios Limitada of San Jose, Costa Rica, represented by Andrii Raetskiy, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <loveandgreen.com> is registered with NamePal.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 4, 2019. On March 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 14, 2019.

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 March 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2019. The Response was filed with the Center on April 2, 2019.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 23, 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, a French company, is a supplier of hygiene and skin care products to mothers and babies. The Complainant was founded in 2011, was one of the first to develop natural diapers, and strives to minimise the use of plastics and petrochemicals in its products.

The Complainant holds the following trademarks:

LOVE & GREEN, word mark, European Union trademark, filed July 27, 2010, registered February 10, 2011, registration number 09276999, in classes 3, 5, 16, and 44;

LOVE & GREEN, figurative, European Union trademark, filed March 31, 2011, registered on September 5, 2011, registration number 09856881, in classes 3, 5, 16, 25, and 44;

LOVE & GREEN, semi-figurative, French trademark, filed and registered January 28, 2010, registration number 3708864, in classes 3, 5, 16, 25, and 44;

LOVE & GREEN, word mark, French trademark, filed and registered February 28, 2011, registration number 3810551, in classes 3, 5, 16, 25, and 44.

The Complainant also operates a website at the domain name <loveandgreen.fr>, which was registered on January 17, 2011.

The Respondent is a trader in domain names with a portfolio of around 5,000 names. The disputed domain name was registered on December 11, 2016, and has resolved to a parking page providing a list of links mostly incorporating the words “love” or “green” and inviting inquiries for the purchase of the domain name. Later it resolved to a page stating that it was for sale and that sponsored links were served automatically.

An attempt by the Complainant to purchase the disputed domain name anonymously from the Respondent did not reach agreement on price.

5. Parties’ Contentions
A. Complainant

The Complainant’s contentions include the following.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. The only essential difference is the replacement of the ampersand in the Complainant’s trademark with “and” in the disputed domain name. Because an ampersand is not allowable in a domain name, the disputed domain name is as close as is possible to the Complainant’s trademark.

The Complainant says also that it operates the domain name <loveandgreen.fr>, which was registered on January 17, 2011.

The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with Complainant and has not been authorised to use the Complainant’s trademark, which was registered at least five years before the disputed domain name.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name. There have been no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and it resolves to a website that offers it for sale and provides pay-per-click links. There is no noncommercial or fair use of the disputed domain name.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith.

The Complainant says that the association of the words LOVE and GREEN in its trademark is highly arbitrary, unusual, and atypical, such that it is impossible for the Respondent not to have had the Complainant’s trademark in mind when registering the disputed domain name. The Complainant and its business would have been found if the Respondent had conducted an Internet search. Failure to conduct a search is a contributory factor in bad faith.

The Complainant says bad faith is revealed by the Respondent’s attempt to sell the disputed domain name for a high price and by its refusal of the Complainant’s offer of USD 1675. The Respondent has also intended to take advantage of the Complainant’s trademark through likely user confusion. The Respondent has intended to prevent the Complainant from reflecting its trademarks in the disputed domain name, and has been found in previous decisions under the Policy to have registered domain names identical or confusingly similar to the trademarks of other parties in bad faith.

The Complainant has cited previous decisions under the Policy that it considers relevant to its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complaint and asserts Reverse Domain Name Hijacking (RDNH). The Respondent’s contentions include the following.

The Respondent contends it is not unlawful or bad faith to register a generic or descriptive domain name that happens to be identical or confusingly similar to a trademark. Trade in domain names is an established, legitimate type of business. Nor is it bad faith for the Respondent to offer the disputed domain name for sale at a price the Complainant is unwilling to pay. The Complainant, having failed to negotiate a purchase price, is abusing the Policy by trying to obtain the disputed domain name through this Complaint.

The Respondent denies that the disputed domain name is confusingly similar to the Complainant’s trademark. In doing so the Respondent canvasses issues including whether the word or words of a trademark can be used generically; secondary meaning and distinctiveness; the alleged weakness and descriptive nature of the Complainant’s trademark; and whether the Complainant has rights in its trademark, which does not project an association with its product.

The Respondent contends that it does have rights or legitimate interests in respect of the disputed domain name. The onus is upon the Complainant to prove otherwise, which it has not done.

In asserting its rights, the Respondent says it is entitled to profit from the generic value of a domain name that does not take advantage of another’s rights. The Respondent’s stock includes a number of domain names incorporating variously the descriptive words “love”, “green”, and others. The Respondent denies (and has submitted a sworn testimony) that it knew of or targeted the Complainant’s trademark when registering the disputed domain name, and says the Complainant has not provided any evidence to the contrary.

The Respondent refutes that the Complainant has rights to a word mark for “love and green” and says it has instead a stylised design mark and logo.

The Respondent submits that the Policy was never intended to permit a party who registers or uses a common term as a trademark to bar others from using the common term in a domain name, unless there is an intention to target the trademark owner. The Complainant does not have a monopoly on the Internet over the use of the term contained in the disputed domain name. There is precedent that the selling of domain names consisting of generic or descriptive terms is a bona fide offering of goods or services under the Policy.

The Respondent says the Complainant has failed to prove bad faith registration and use of the disputed domain name. There is no evidence the Respondent knew of the Complainant, which promotes its goods in France, and the concept of constructive knowledge is insufficient under the Policy. The Google search result produced by the Complainant about itself recently is not valid for the time of registration of the disputed domain name, and would be influenced by the searcher’s location.

The Respondent cites previous decisions in support of its assertion that automatically generated links on a website do not constitute bad faith on the part of the domain name owner. There is no evidence the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark. The Complainant has not produced any evidence of actual confusion. The Complainant has not been prevented from reflecting its trademark in a corresponding domain name.

The Respondent denies it has engaged in a pattern of blocking registrations and says it has not registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.

The disputed domain name was not actively advertised for sale and the first offer to purchase it came from the Complainant. The Respondent reiterates that the sale and purchase of domain names is legitimate business and that declining the Complainant’s best offer to buy, or making a counter-offer to sell, does not constitute an act of bad faith.

The Respondent alleges RDNH on the basis that the Complainant knew or ought to have known that it was unable to prove either lack of rights or legitimate interests, or bad faith, on the part of the Respondent.

The Respondent has cited a number of previous decisions under the Policy it considers relevant to its position.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Panel has examined the trademark registration evidence produced and finds that the Complainant has rights in the registered trademark LOVE & GREEN for the purposes of paragraph 4(a)(i) of the Policy.

Since the Respondent has contested numerous aspects of the Complainant’s trademark registrations and rights, the Panel observes that in general a registration with a bona fide national trademark principal register conveys the requisite rights under paragraph 4(a)(i) of the Policy. Paragraph 4(a)(i) of the Policy is unconcerned with questions of the geographical jurisdiction of the trademark, the goods or services for which it was registered, and the date of priority or registration (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.1.2 and 1.2). Only an objective comparison of the disputed domain name with the trademark is required. It is further noted, since it is disputed by the Respondent, that one of the Complainant’s European trademarks is specifically a word mark, as is one of the French trademarks (“marque verbale”).

The disputed domain name is <loveandgreen.com>, of which the generic Top-Level Domain (gTLD) designation “.com” may be disregarded in the determination of confusing similarity. What remains is “loveandgreen”, which is found to be effectively identical to the Complainant’s trademark LOVE & GREEN because an ampersand is not allowed in a domain name. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has stated a prima facie case to the effect that the Respondent is not affiliated with Complainant and has not been authorised to use the Complainant’s trademark, which was first registered more than five years before the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The Respondent argues that it has rights under paragraph 4(c)(i) of the Policy because, among other things, it is in the legitimate business of creating, buying and selling domain names, of which it holds a stock of some 5,000. It is further argued that the words “love and green” are generic or descriptive and “stimulated the Respondent’s interest” as a commercially valuable domain name. The Respondent’s assertion that domain names are available on a first-come basis is generally correct (at least in the “.com” gTLD), but subject, as the Respondent also says, to “absent improper motive”. An example of an improper motive, in the context, would be the Respondent having been aware of or having targeted the trademark holder.

The question of rights and legitimate interests under paragraph 4(a)(ii) of the Policy must in some cases, as here, be considered alongside the question of registration and use in bad faith under paragraph 4(a)(iii) of the Policy. The matter of rights and legitimate interests will be returned to in due course.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.

The website to which the disputed domain name resolved when first captured by the Complainant (date unstated) displayed a list of 10 links or link headings, one of which was duplicated, such as “Green couches” and “Keep Calm and Love”. A running header stated “This domain is available for sale”, with information on how to inquire, including “click here”. Inquiry led to a sub-page of “www.afternic.com”, which offered the disputed domain name for sale and provided an application form headed “Get a price in less than 24 hours”. Later, on February 22, 2019, the disputed domain name resolved to a page containing a statement that it was for sale and a disclaimer stating that sponsored listings were provided automatically by a third party provider, with “click here” leading to the “www.afternic.com” website. Thus, the disputed domain name was clearly for sale.

The Complainant’s position in terms of bad faith, in part, is that the Respondent could not have been unaware of the Complainant’s highly unusual trademark, or ought to have found it with an Internet search, and that the attempt to sell the disputed domain name to the Complainant, for a price revealed in email correspondence to be USD 6,499, was itself indicative of bad faith.

The Respondent’s position, in part, is that the disputed domain name was registered without knowledge of the Complainant, comprises two ordinary words joined by “and”, and is legitimately for sale. The Complainant’s attempt to get it without paying the price is an abuse of the Policy.

The resolution of these diametric positions requires a determination under paragraph 4(b)(i) of the Policy as to whether the disputed domain name was acquired “primarily for the purpose of selling” to the Complainant or a competitor of the Complainant. It is not necessary to identify any direct competitor of the Complainant (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “The natural meaning of the word `competitor´ is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”). The evidence must be weighed, therefore, as to whether, on the balance of probabilities, the Respondent was aware of the trademark LOVE & GREEN at the time of registration of the disputed domain name.

The Respondent has sought to associate the disputed domain name with others in its stock (the Respondent’s capitalisation is retained for ease of reading): <LoveTheLand.com>, <LoveQuick.com>, <lovelifeblog.com>, <ilovethegym.com>, <LoveBuying.com>, <WeLovePop.com>, <Lovetolivehere.com>, <PerfectGreens.com>, <ProvenGreen.com>, <SelfGreen.com>, <CrowdGreen.com>, <SlimGreen.com>, <GreenFarmFoods.com>, <GreenLifeFoods.com> and <GoGreenTechnology.com>. The implication is that all are benign, and the disputed domain name, by association, is similarly benign. The Panel is not so persuaded. The words “love” and “green” may well be ordinary descriptive dictionary words, but put together they form the Complainant’s invented, unusual, and distinctive trademark LOVE & GREEN.

The Respondent has produced a copy of the first 22 results of a search of the WIPO Global Brand Database for the brand “love green” or similar. All seven results in the form “love & green”, i.e., including “&” (none contained the word “and”), were listed as owned by the Complainant or one of its principals, Céline Couteau or Gabriel Augusto.

The Respondent is in business to the extent of holding a stock of some 5,000 domain names that logically were acquired and are maintained for their saleability. On that scale of business, the Respondent may reasonably be presumed to operate by evaluating the potential market for its domain names. The Respondent has demonstrated its awareness of resources such as the WIPO Global Brand Database, which features trademarks, and would surely be adept at the use of other trademark resources and Internet search engines such as Google in connection with its business. The first page of 10 results for the Complainant’s own Google search (which may be geospecific and searcher-specific) for “love and green” returned exclusively references to itself or to its products being sold by others. As pointed out by the Respondent, the Complainant’s search date of February 22, 2019 is later than the registration date of the disputed domain name on December 11, 2016, however the latter date was well advanced along the timeline between the Complainant’s first filing of a trademark on January 28, 2010, and the date of the Complaint.

As the Respondent correctly says, the concept of constructive notice of a trademark is applied sparingly under the Policy. Conversely, a registrant of domain names in bulk is under an obligation to check with reasonable diligence for potentially conflicted trademarks (WIPO Overview 3.0 at section 3.2.3, headed “Willful blindness and the duty to search for and avoid trademark-abusive registrations”). That section, whilst recognising the possibility that similar trademarks may coexist in certain circumstances, emphasises the application of the concept of willful blindness to a registrant who fails to conduct essential searches, “irrespective of whether the registrant is a professional domainer”.

Paragraph 2 of the Policy states in part: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.

Furthermore, the Registration Agreement entered into between the Registrar and the Respondent states in part at paragraph 12.2, “You agree that … neither the ownership of any domain name nor the manner in which you intend to use such domain name will infringe the legal rights of a third party, including trademark rights. We urge you to investigate to see whether the domain name you select or its use oversteps legal rights of others”.

The Registration Agreement then emphasises by repeating, in part of paragraph 12.3, “We urge you to investigate to see whether the domain name you select or its use oversteps legal rights of others”.

The Respondent has denied prior knowledge of the Complainant’s trademark, which according to the Respondent’s own recent search of the WIPO Global Brand Database (or such part of it as has been produced in evidence), is unique. The Respondent was on clear notice both under the Policy and under the Registration Agreement that it should have made all necessary and prudent investigations. Its failure to do so supports a finding that the disputed domain name was registered in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Advertisement of the disputed domain name for sale and its use to host pay‑per-click links constitute use in bad faith in terms of paragraphs 4(b)(i) and 4(b)(iv) of the Policy. Accordingly, on the evidence and on the balance of probabilities, the requirements of paragraph 4(a)(iii) of the Policy are satisfied and the Panel finds registration and use of the disputed domain name in bad faith.

The Complainant has produced copies of WIPO UDRP decisions in which the present Respondent was found to have registered domain names in conflict with other trademarks, namely <jacobscoffee.com> (trademark JACOBS), <skillease.com> (unregistered trademark SKILLEASE), <cic-enligne.com> (registered trademark CIC), and <glucern.com> (registered trademark GLUCERNA). The finding of bad faith in the present case is further strengthened by the Respondent’s previous pattern of the registration of trademark-abusive domain names.

The question of rights and legitimate interests in the disputed domain name may now be finalised. Since a finding of registration and use in bad faith has been made under paragraph 4(a)(iii) of the Policy, the Respondent’s use of the disputed domain name under paragraph 4(c)(i) of the Policy cannot be found to be in connection with a bona fide supply of goods or services. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.

The Complainant having prevailed, it is not necessary to consider the Respondent’s allegation of RDNH.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <loveandgreen.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: May 2, 2019


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