geopack.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Geopack v. Name Administration Inc. (BVI)

Case No. D2006-1590

1. The Parties

The Complainant is Geopack, Massieux, France, represented by Cabinet Laurent & Charras, Ecully, France

The Respondent is Name Administration Inc. (BVI), Grand Cayman, Cayman Islands B.W.I., United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Media, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <geopack.com> is registered with Domain Name Sales Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2006. On December 15, 2006, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the domain name at issue. On December 20, 2006, Domain Name Sales Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 22, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2007. The Response was filed with the Center on January 23, 2007.

The Center appointed Wolter Wefers Bettink, Nathalie Dreyfus and Sir Ian Barker as panelists in this matter on March 1, 2007. 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 French company, formed on August 16, 2000.

The Complainant registered its domain name <geopack-industries.com> on July 19, 2000.

The disputed domain name was registered by GeoSight, Inc. on January 26, 2000. The domain name registration of GeoSight, Inc. expired on January 26, 2004.

The Respondent registered the disputed domain name on April 12, 2004.

The Complainant owns the following trademark registrations:

- the French trademark registration GEOPACK, registered with the French Intellectual Property Office, registration no. 05/3400371, application date: December 28, 2005;

- the international trademark registration GEOPACK, registered with the World Intellectual Property Organization, registration no. 893268, registered on June 15, 2006, designated for the European Community.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that it owns both a French and an international registration of the trademark GEOPACK and that the disputed domain name is identical to this trademark. The Complainant further argues that although these trademark registrations both post-date the registration of the disputed domain name, this is not of decisive significance under the first element of the Complaint, as set out in Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871.

Rights or Legitimate Interests

The Complainant contends that the Respondent will not be able to demonstrate a right or a legitimate interest in the disputed domain name under paragraph 4(c) of the Policy. The Complainant contends that, although the Respondent has used the disputed domain name prior to the Complaint, its use is not bona fide according to paragraph 4(c)(i) of the Policy, since the Respondent is using the disputed domain name as a ‘parking page’. The Respondent refers to Prestige Brands Holdings, Inc., and Prestige Brands International, Inc. v. The domain is not for sale / Motohisa Ohno, WIPO Case No. D2006-0608, in which the Panel decided that “registration of a domain name for no reason other than to sell it on or to connect it to a parking page for ‘revenue-per-click’ income cannot of itself give rise to a legitimate interest in respect of the domain name in issue.”

According to the Complainant, the Respondent is not making a legitimate, non-commercial or fair use of the domain name, since the ‘parking page’ to which the disputed name is linked, is clearly designed to generate revenue per click.

The Complainant further contends that the trademark GEOPACK does not appear to be linked to the Respondent, its business, nor to the various links and topics featured on the website of the disputed domain name. The Complainant contends that there is no reason for the Respondent to choose the name ‘Geopack’.

Registered and Used in Bad Faith

The Complainant states that the Respondent could not have been aware of the Complainant’s trademark registration when it registered the disputed domain name. However, the Complainant refers to ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, in which the Panel decided that for the purposes of the Policy, a domain name registration can have been undertaken in bad faith, even if the trademark right at which such bad faith was directed, arose after the registration of the domain name. The Complainant also refers to WIPO Case No. D2003-0320Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),.

The Complainant stresses that:

- it has been trading under the name “Geopack Industries” since August 2000, having been registered in an appropriate Trade Registry in France;

- it has been the owner of the domain name <geopack-industries.com> since July 2000;

- the domain name <geopack-industries.com> links to a website that is listed first in a Google search.

The Complainant concludes that the Respondent registered the disputed domain name in bad faith, because it knew, or was grossly negligent in not knowing, that the disputed domain name was used on the web as a trade name and trademark. The Complainant further submits that the Respondent registered the disputed domain name to generate revenue-per-click, as a result of the strong showing of Geopack in an Internet search, in particular, when using the Google search engine.

B. Respondent

Identical or Confusingly Similar

The Respondent admits that the Complainant has acquired a trademark right in France. The Respondent also points out that the Complainant applied for the trademark at the end of December 2005. The Respondent registered the disputed domain name in April 2004.

Regarding the International trademark registration, the Respondent submits that an International trademark registration in itself cannot be enforced against others.

Regarding the Complainant’s contention that it ranks first in a Google search, the Respondent submits that this contention is only valid for Google in France (“www.google.fr”).

Regarding the Complainant’s contention that it has been using “Geopack –Industries” as a trade name since 2000, the Respondent submits that a trade name cannot constitute a right to a name as stated in the Policy. The Respondent cites Sealite Pty Limited v. Carmanah Technologies, Inc.,WIPO Case No. D2003-0277, in which case the Panel held that the Policy does not protect trade names or company names when this is the extent of their use. Moreover, the Respondent points out that the Complainant has failed to register the disputed domain name in the past. The Respondent concludes that neither the Complainant’s trade name, its regional Google ranking, nor its registration of a domain name confer trade or service mark rights recognizable under the Policy.

Rights or Legitimate Interests

The Respondent submits that it is in the business of obtaining and recycling cast-off and abandoned domain names. The Respondent contends that the original holder of the domain name <geopack.com> was a Colorado corporation Geosite Data, Inc., which was dissolved in January 2002. The Respondent registered the disputed domain name after its initial expiration.

The Respondent submits that it is selective and considerate when registering domain names in order to avoid infringing the rights of others.

The Respondent further contends that its business of obtaining and recycling castoff and abandoned domain names is a legitimate activity and it relies on various Panel decisions.

Registered and Used in Bad Faith

The Respondent submits that it registered the disputed domain name prior to the date on which the Complainant registered its trademark GEOPACK. The Complainant refers to Section 3.1 of the WIPO Overview of UDRP Decisions, which considers the question whether bad faith can be proved if the disputed domain name was registered before the trademark was registered. The Complainant further submits that the consensus view is that generally in such cases the registration of the disputed domain name cannot have been in bad faith because the registrant could not have contemplated the Complainant’s non-existent right.

However, in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential rights of the complainant, bad faith can be proved. The Respondent submits in this respect that it was not aware of the Complainant and could not have been expected to be aware of the Complainant, because the Complainant’s website under “www.geopack-industries.com” is in the French language only. Furthermore, the Respondent points out that there are many companies and domain names that include the word “geopack”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the first element of the UDRP is satisfied, since the Complainant owns a trademark registration for GEOPACK, to which the disputed domain name is identical.

B. Rights or Legitimate Interests

In view of the Panel’s finding under heading C, the Panel does not need to address the question of whether the Respondent has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

If the trademark on which a complaint relies has been registered (in this case, more than a year) after the registration of the disputed domain name, the consensus of WIPO Panels is that bad faith can, generally speaking, not be proved, as the respondent could not have contemplated the complainant’s non-existing right. (See: John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182.) There are however exceptions to this rule.

As set out in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, such an exception may occur where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter’s development of a new trademark.

Neither of these exceptions apply in this case. The Complainant has not submitted that, nor provided evidence, that at the time of registration it intended to file a trademark and that the Respondent was aware thereof.

The Complainant does submit that the Respondent was or should have been aware of its business ^__ which was founded in 2000 ^__apparently relying on a right in the trade name GEOPACK and its domain name <geopack-industries.com>. However, the UDRP only provides for an action on the basis of a trademark right. If the Complainant, by relying on the rights in its company name and domain name, intended to invoke unregistered trademark rights, no compelling evidence of such rights has been provided, nor is it clear that such rights could readily be established in this case. Moreover, the facts brought forward by the Complainant do not justify the conclusion that the Respondent was aware of the Complainant’s use of the GEOPACK name. Whether the Respondent should have been aware of such use is a different question, with which party location and website language have little to do as such. With reference to the decision in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, given today’s registration systems, in particular as used by professional traders, the Panel finds that the use of registration programs to snap up expired domain names does not as such provide a shield against bad faith. Even so, the circumstances of the present case, particularly the status of the rights asserted and the domain name at issue, do not support a finding of bad faith.

In conclusion, the Panel finds that the Complainant has not provided evidence that the domain name was registered and is used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: March 15, 2007