The Complainant is Certipost NV, of Belgium, represented by Crowell & Moring LLP, Belgium.
The Respondent is Virtual Point Inc., of United States of America, represented by Wakino Brett P., of United States of America.
2. The Domain Name and Registrar
The disputed domain name <certipost.com> (the “Domain Name”) is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2008. On August 4, 2008, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the Domain Name. On August 4, 2008, TierraNet d/b/a Domain Discover 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 amendment to the Complaint on August 7, 2008. 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 on August 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2008. The Response was filed with the Center on August 30, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on September 4, 2008. 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.
The Complainant subsequently submitted, without the leave of the Panel, a document entitled “Reply to the Response” on September 8, 2008. The Respondent objected to the submission of the Reply, but, submitted a “Sur Reply” dated September 11, 2008, to be considered in the event that the Panel elected to admit the Complainant’s Reply.
Having regard to the extensive supplemental filings by the parties, the Panel extended the time for it to give its decision in the case, to September 25, 2008.
4. Factual Background
The Complainant
The Complainant is a Belgian corporation. Its website at “www.certipost.be” (the “Complainant’s Website”), describes its business in the following terms: “We facilitate and certify e-Communications”. The Complainant’s Website describes the Complainant as a specialist in secured electronic document exchange for companies, the state, and residential customers. The Complainant’s Website asserts that more than 43,500 companies and 430,000 residential customers use Certipost Solutions.
The Complainant says that it is the holder of registered Benelux and International registrations of the trade mark CERTIPOST. The claimed Benelux registration is in international classes 9, 38, and 42 (Registration Number 0728623), and has effect from October 7, 2002. The claimed International registration is in the same classes, and has effect from January 23, 2003 (Registration Number 799855).
The Benelux trade mark registration certificate produced with the Complaint appears to be in the Dutch language, and, as best the Panel can ascertain, shows the registered proprietor as BPG e-Services N.V. of Brussels, Belgium. That party is also shown as the proprietor in the (French-language) International registration certificate for the CERTIPOST trade mark.
However, the Complainant has produced certain email correspondence from it or its representative asserting that the trade mark CERTIPOST is owned by the Complainant, and the Respondent does not appear to have seriously challenged that assertion. The Complainant has also produced a copy of a Writ of Summons issued by it in the Commercial Court at Brussels in May 2008, against a company called “Crosspath Company”, in which the Complainant asserted ownership of the Benelux and International trade mark registrations. (The claim in the Brussels Commercial Court sought various remedies, including a declaration that the registration and use of the Domain Name by Crosspath Company was an infringement of the Complainant’s trade mark rights, as well as its rights to the company name “Certipost N.V”. The Writ of Summons sought an order transferring the Domain Name to the Complainant, together with a monetary penalty.)
It appears that the Writ of Summons filed in the Commercial Court in Brussels was never served, and in the meantime the Domain Name was transferred to the Respondent at some time early in 2008 – the Complainant contends that the transfer took place on May 15, 2008; the Respondent says that the transfer took place on or before March 9, 2008.
The Complainant says that it has used the CERTIPOST mark for almost six years, in its external communications and branding (e.g. on its Belgium website at “www.certipost.be”). Webpages from the Complainant’s Website printed on August 4, 2008 show the use of the expression “Certipost”, as a trade mark (featuring a stylized letter “C” as a prominent part of the mark).
The Respondent and the Domain Name
The Domain Name was originally registered on November 20, 2000. According to the Response, the original registrant was Mr. Dave Lahoti (“Mr. Lahoti”), doing business as “intermagic.com”. The Respondent says that the registration was subsequently renewed by Mr. Lahoti, doing business as “Crosspath.com”.
Mr. Lahoti incorporated the Respondent on January 22, 2007. As noted above, the Domain Name was transferred to the Respondent in early 2008. As the Respondent put it in the Response: “All rights, title, interests, and license regarding the Domain Name and the mark were transferred from Mr. Lahoti individually to his wholly owned subsidiary, the Respondent”.
The Complainant says, and the Respondent does not deny, that the Domain Name has been used for a landing page, which is accessible via the domain name <veripost.com>. The Complainant produced pages from the website at the Domain Name (the “Respondent’s Website”), printed on August 4, 2008. These pages contained a search engine facility, and a number of “click-through” links grouped under a variety of headings. Some of these headings were listed under a major heading: “Related Searches”, and these included “Email Forwarding Service”, “Switch Email”, “Belgacom”, “Verizon”, “Internet Banking”, and “Facturen Belgacom”. In addition, there were more general click-through categories of the kind one normally finds on landing pages (e.g. “Travel”, “Lifestyle”, “Finance”, “Home”, etc.).
The Complainant also produced an earlier printout from the Respondent’s website, printed on May 5, 2008. On that date, the Respondent’s Website featured the search engine facility, with related searches grouped under headings such as “Email Forwarding Service”, “Switch Email”, “Online Banking”, “Network Security”, “Online Payment”, and “Belgacom”.
The Respondent says that the Domain Name has been used by it (and earlier by its incorporator Mr. Lahoti) since November 2000, and that the Domain Name is currently used in connection with Respondent’s email forwarding and certification services, and linked to the Respondent’s Website.
The Panel has itself visited the Respondent’s Website (on September 25, 2008). The word “veripost” appeared prominently, and the search engine facility was present, but there were only two links: “Email Forwarding Service” and “Switch Email”. However clicking on these two links did not take the Panel to any webpage or other online location.
Correspondence between the Parties
The Complainant produced copies of email communications between the Parties or their representatives in the period between August 2007 and March 2008. The Complainant’s correspondence referred to its claimed rights in the CERTIPOST mark, and requested the then-registrant of the Domain Name (Mr. Lahoti trading as Crosspath.com) to cease any use of the Complainant’s claimed trade mark. One letter from the Complainant to the then-registrant of the Domain Name said: “In the meantime, we noticed that your content title does not mention “Certipost” any more. We appreciate this recognition of our rights.” On October 26, 2007, the then-registrant of the Domain Name responded, drawing attention to the fact that the Complainant’s date of first use of the mark CERTIPOST was October 2002, being almost two years after the date of first registration of the Domain Name. The Respondent’s representative also rejected the Complainant’s allegations in an email dated March 12, 2008. The Respondent’s representative repeated the point that the then-registrant of the Domain Name had been using the Domain Name since November 2000, and claimed superior intellectual property rights in the CERTIPOST mark over those claimed by the Complainant.
The Complainant’s representative wrote to the then-registrant of the Domain Name on March 26, 2008, re-asserting the Complainant’s claimed rights in the Domain Name, and indicating that recovery action would follow if the then-registrant did not co-operate by transferring the Domain Name to the Complainant at no cost. There was no reply, and the Court proceeding in the Commercial Court at Brussels followed. When that proceeding was not served and the Complainant discovered that the Domain Name had been transferred to the Respondent, the present administrative proceeding was commenced.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is identical to the CERTIPOST mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) Before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
(ii) The Respondent has not been commonly known by the Domain Name, and the Respondent has not acquired trade mark or service mark rights in the Domain Name.
(iii) The Respondent is not making a legitimate non commercial or fair use of the Domain Name. The Respondent has made the use of the Domain Name by the Complainant impossible, and has misleadingly diverted consumers and damaged the Complainant’s trade marks.
3. The Domain Name was registered and is being used in bad faith:
(i) The Domain Name was acquired in order to prevent the Complainant as owner of the CERTIPOST mark, from further reflecting that mark in a corresponding domain name. This attitude shows that the Respondent has engaged in a pattern of such malicious conduct.
(ii) The Domain Name was acquired primarily for the purpose of disrupting the business of the Complainant.
(iii) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, endorsement, of the Respondent’s Website or of a service on its website.
(iv) The Respondent’s refusal to return the Domain Name to the Complainant is being done out of malice or spite. That is sufficient to demonstrate use of the Domain Name in bad faith.
B. Respondent
The Respondent contends:
1. The Respondent concedes that the Domain Name is identical to the Complainant’s 2002 alleged trade mark, although the goods and services are distinct.
2. The Respondent secured the Domain Name two years before the Complainant’s alleged first use of its mark, and the Respondent’s rights in the Domain Name are superior. In fact, the Respondent’s first use of the Domain Name dating back to November 2000 establishes Common law trade mark rights in the Respondent since that time.
3. The Respondent has a legitimate interest with respect to the Domain Name, through its goodwill and usage of the mark and the Domain Name dating back to November 2000. The Domain Name was registered in the Respondent’s individual name in November 2000, and corporately in March 2008.
4. The Domain Name is currently used in connection with the Respondent’s email forwarding and certification services, and is linked to the Respondent’s Website. The Complainant provides no substantiation of the allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name.
5. Since the Domain Name was acquired two years before the Complainant’s use of the CERTIPOST mark, it is chronologically impossible for the Respondent to have acquired the Domain Name to prevent the Complainant from using it. At the time the Respondent acquired the Domain Name in November 2000, he had no knowledge of the Complainant. For the same reason, it is impossible for the Respondent to have acquired the Domain Name to disrupt in any way whatsoever the business of the Complainant. If anything, the Complainant has been using the CERTIPOST mark in Europe to disrupt the Respondent’s utilization of the mark.
6. It is standard American business practice for an individual sole proprietorship to re-organize his business into a wholly-owned corporate entity. This transfer of full rights, title, interest, and license in the Domain Name and mark from Mr. Lahoti individually to Mr. Lahoti’s wholly-owned corporation “Virtual Point Inc”, is the Respondent’s straightforward inter-business organizational right. Mr. Lahoti’s wholly-owned corporation is the successor in interest to Mr. Lahoti’s individual intellectual property rights (See Rock Bottom Restaurants Inc. v. Duane Reade,
WIPO Case No. D2000-1014).
7. Upon demand by the Complainant, the Respondent unequivocally replied setting out his superior intellectual property rights, dating back two years before the Complainant’s existence or first use of the CERTIPOST mark.
8. The Complainant’s European Court summons was never served, and contained contentions having no merit.
9. The Complainant has engaged in reverse domain name hijacking. It is attempting to take a valuable property right from the Respondent, under the guise of a manufactured allegation of trade mark infringement by the Respondent.
10. The Complainant knew of the Respondent’s superior trade mark rights, and that the Respondent registered the Domain Name two years prior to the Complainant’s first use of the CERTIPOST mark and the apparent existence of the Complainant. Despite that knowledge, the Complainant made threatening correspondence to the Respondent, and disregarded the Respondent’s good faith registration evidence. The initiation of the European Court action and the filing of this proceeding were done with intent to harass, annoy, and intimidate the Respondent into surrendering his property.
6. Discussion and Findings
A. Procedural Issue – Supplemental Filings
Under the Rules, neither party is entitled to file supplemental filings as of right. It is entirely for the panel in its discretion to determine whether any further statements will be considered. A further statement from a complainant will usually only be admitted when that is necessary to ensure that the complainant is given a fair opportunity to present its case (Rules, Paragraph 10(b)) – for example, where the complainant has become aware of important new evidence (or new legal authority) which it could not with reasonable diligence have produced in its complaint, or where the respondent has alleged reverse domain name hijacking (which allegation could not have been reasonably anticipated by the complainant at the time of the filing of the complaint based on the then available evidence), and it appears to the panel that there might be some basis for the allegation (in which case procedural fairness usually requires that the complainant be afforded an opportunity to respond).
In this case, the only potentially significant matter which the Complainant might not have been aware of until it received the Response, was the identity of Mr. Lahoti as the owner and incorporator of the Respondent. The Complainant has sought in its supplementary filing to establish that the Respondent has been guilty of a pattern of abusive conduct under the Policy, by referring to several prior panel decisions in which Mr. Lahoti or entities controlled by him have been involved. The Respondent has countered by reference to a prior panel decision in which Mr. Lahoti’s activities were upheld.
The Respondent in this case is the corporation, Virtual Point Inc., not Mr. Lahoti, and it is difficult to see how prior panel decisions involving Mr. Lahoti or other entities controlled by him could assist in proving that the Respondent has “engaged in a pattern of such conduct” (to quote the wording of paragraph 4(b)(ii) of the Policy). In the end, the Panel is able to reach a conclusion in the case without reference to the supplemental filings, and the justice of the case does not require that they be admitted.
Accordingly, the Panel declines to admit and consider the parties’ respective supplemental filings.
B. What the Complainant Must Prove
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
C. Identical or Confusingly Similar
The Complainant has sufficiently proved that there are registered Benelux and international registrations of the mark CERTIPOST. The Domain Name is clearly identical to that mark, so the Complainant must succeed on this part of its Complaint if the Complainant has rights in that mark.
The immediate difficulty is that the trade mark certificates produced by the Complainant do not appear to name it as the proprietor of the mark – as best the Panel can work out from the (foreign language) certificates which the Complainant produced, the named proprietor is “BPG e-Services N.V.” However that is not necessarily fatal to the Complaint, because numerous panel decisions have now held that even a non-exclusive license to use a trade mark or service mark will constitute a sufficient “right” in that mark for the purposes of paragraph 4(a)(i) of the Policy (see in that regard the decision of this Panel in NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ ,
WIPO Case No. D2007-1079).
In this case, it is clear enough that the Complainant, a corporation based in Belgium, has been using the CERTIPOST mark in respect of services which appear to be within the specifications set out in the two CERTIPOST trade mark certificates the Complainant has produced. It holds the <certipost.be> domain name, and uses the CERTIPOST mark on the Complainant’s Website. Its email correspondence also features what appears to be trade mark use of the expression “Certipost” (including on one email “Certipost, your partner to send, receive, and archive electronic documents”).
Consistent with that use, the Panel notes that, in its email dated August 14, 2007 to the then-registrant of the Domain Name, the Complainant referred to its claimed ownership of the registered mark CERTIPOST, followed by the words “(See appendix 1)”. No copy of that appendix 1 was provided to the Panel in this proceeding, but in a reply email dated October 26, 2007 the then-registrant of the Domain Name stated: “Based on your own documentation, your client’s date of first use of the mark CERTIPOST is 07-10-2002 […]. Please advise immediately if this is incorrect.” The Complainant through its representative subsequently wrote to the then-registrant, asserting proprietorship of the CERTIPOST registrations, and using the correct registration numbers for the Benelux and International registrations.
While the quality of the Complainant’s proof on this part of the Complaint leaves much to be desired, the Panel is on balance satisfied from the Complainant’s use of the CERTIPOST mark, and from the record above, that the Complainant has rights in the CERTIPOST mark as registered in the Benelux countries and internationally under the Madrid system of international trade mark registration. Whether the Complainant’s right is as owner (either by assignment from the corporation shown as proprietor in the trade mark certificates, or possibly because that corporation is in fact the Complainant under a former name), or whether the Complainant is a licensee authorized to use the CERTIPOST mark, the result is the same – the Complainant has the necessary right in the CERTIPOST mark for the purposes of -paragraph 4(a)(i) of the Policy.
The Complainant has therefore proved this part of its Complaint.
D. Rights or Legitimate Interests in respect of the Domain Name
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, will be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(1) Before any notice [to the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(2) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(3) Where [the respondent is] making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests in the disputed domain name on the part of the respondent, the evidentiary burden shifts to the respondent to show, that it does have rights or legitimate interests in the disputed domain name.
“A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Complainant has shown that it has rights in the CERTIPOST mark, that the Domain Name is identical to that mark, and that it has not licensed or authorized the Respondent to use the CERTIPOST mark, whether in the Domain Name or otherwise. There is no question of the Respondent being “commonly known by” the Domain Name, so paragraph 4(c)(ii) of the Policy can have no application. Similarly, paragraph 4(c)(iii) of the Policy cannot apply - the Respondent’s Website consists of a landing page which is substantially commercial in nature - the Respondent is presumably deriving pay-per-click revenue for each visitor to the Respondent’s Website who clicks through to one of the third party websites linked to the Respondent’s Website. Such a use of the Domain Name cannot be a “legitimate non-commercial or fair use without intent for commercial gain.”
Those factors provide sufficient prima facie proof of a lack of any right or legitimate interest in the Domain Name, so, in accordance with the majority panel view discussed above, the evidentiary burden shifts to the Respondent to show that it has some right or legitimate interest in the Domain Name.
The Respondent’s principal argument on this part of the Complaint, appears to be that it is the successor in interest to the rights which Mr. Lahoti is said to have enjoyed in the Domain Name and in some underlying (unregistered) CERTIPOST mark as the Respondent put it in the Response: “All rights, title, interests, and license regarding the Domain Name and the mark were transferred from Mr. Lahoti individually to his wholly owned corporation, the Respondent.”
Certainly, proof that a respondent holds a trade mark or service mark corresponding to a disputed domain name, will normally be sufficient to establish a right or legitimate interest under paragraph 4(a)(i) of the Policy – see in that regard the decision of this Panel in Uponor Oyj and Uponor Innovation AB v Iman G. Mohammadi, Network Supporters Co. Ltd,
WIPO Case No. D2008-0209.
But the Respondent has not produced any sufficient proof that (i) Mr. Lahoti owned any relevant CERTIPOST mark, or (ii) if he did, that that mark was transferred to the Respondent. As to (i), proof of ownership of a domain name is not proof of the existence or ownership of a corresponding trade mark or service mark, and while proof of use of a mark may in certain circumstances be sufficient to establish unregistered, or common law, rights in a mark in the United States of America (for the kind or proof which is usually required, see the recent three member panel decision in Thomas Pick aka Pick Inc. v EUROPREMIUM Ltd.Elaine Maria Gross,
WIPO Case No. D2008-1010), the Respondent has offered no sufficient proof such use. There is no evidence about the extent of sales made by Mr. Lahoti or the Respondent under a CERTIPOST mark, no evidence of advertising expenditure promoting such a mark, and no evidence of the use of the mark by third parties (e.g. customers or suppliers) to refer to goods or services provided by Mr. Lahoti or the Respondent. Most tellingly, the Domain Name does not even point to a website which prominently features a claimed “Certipost” mark – the Respondent’s website refers only to the expression “veripost”.
The onus is on the Respondent on this part of the Complaint, and the Respondent has failed to satisfy the Panel, on the balance of probabilities, that either Mr. Lahoti or the Respondent owns or owned a CERTIPOST trade mark or service mark. (Even if Mr.Lahoti did own such a mark, the Panel is not satisfied on the evidence produced that any such mark, as opposed to the Domain Name, has been transferred to the Respondent. No documentation evidencing the transfer of the mark has been produced, and while the Respondent has sought to portray the transfer of the Domain Name to the Respondent as no more than a minor internal rearrangement of Mr. Lahoti’s business affairs, the fact remains that the Respondent, as a corporation, is a different legal entity from Mr. Lahoti. Normal, prudent business practice would call for some documentation of any significant transfer of assets from the individual to the corporation. Further, the Panel notes that the Respondent was incorporated in January 2007, over a year before the Domain Name was transferred to the Respondent. That delay has not been explained by the Respondent.)
The remaining issue on this part of the Complaint, is whether the Respondent might claim a right or legitimate interest under paragraph 4(c)(i) of the Policy (use, or demonstrable preparations to use, the Domain Name, in connection with a bona fide offering of goods or services, before the Respondent received notice of the dispute. For the reasons set out in the next section of this decision, the Panel finds that the Respondent’s use of the Domain Name has not been in connection with a bona fide offering of goods or services. The Respondent therefore cannot bring itself within the safe harbor of paragraph 4(c)(i) of the Policy.
The Respondent not having advanced any other plausible basis for a claim to a right or legitimate interest in the Domain Name, the Complainant succeeds on this part of its Complaint.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a disputed domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Respondent has registered and used the Domain Name in bad faith. The Panel has reached that view for the following reasons:
1. The Domain Name is identical to the mark in which the Complainant has rights, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise.
2. The Respondent does not itself hold any (registered or unregistered) rights in any “Certipost” mark.
3. The relevant date of registration in this case is, as the Complainant submits, the date on which the Respondent acquired the Domain Name. (See Robotex Inc. v. eDomain.biz,
WIPO Case No. D2007-1074; The iFranchise Group v. Jay Bean/ MDNH, Inc/ Moniker Privacy Services 23658,
WIPO Case No. D2007-1438). That means that the relevant date for assessing bad faith registration, is early 2008, and not November 2000 as the Respondent contends. The Respondent argues for a “substance over form” approach, under which the 2008 transfer from Mr. Lahoti to his company should be effectively ignored, as merely a rearrangement of Mr. Lahoti’s business affairs. The Panel rejects that approach. First, the Respondent is a separate legal entity from Mr. Lahoti – it may, now or in the future, be subject to control by others. Secondly, in circumstances where there appears to have been bad faith use of a disputed domain name by a party who had earlier registered that domain name in good faith (as appears to have been the position in this case prior to the transfer of the Domain Name to the Respondent), the Panel sees no injustice in the “internal” transfer of the Domain Name within the wider business group, producing the “side effect” of giving the third party trade mark owner who has been subjected to the bad faith use, an opportunity to invoke the Policy which it would not otherwise have had (because it could not show that the original registration of the disputed domain name had been made in bad faith). In other words, this Panel is of the view that bad faith registration and use can be established by a complainant notwithstanding that the original registration of a disputed domain name may have been effected in good faith, where: (i) there has been supervening bad faith use of the disputed domain name by the original registrant, and (ii) the disputed domain name is transferred to another entity within the original registrant’s business organization, and (iii) that other entity acts in bad faith in acquiring the disputed domain name and in subsequently using it.
4. In this case, Mr. Lahoti and the Respondent appear to have capitalized on the Complainant’s goodwill in its CERTIPOST mark. Anyone who was familiar with the Complainant and its activities would naturally assume that the Domain Name would point to a website operated by the Complainant, and there appear to have been Dutch-language, or Belgium- related, links on the Respondent’s Website (e.g. the “Belgacom”, and “Facturen Belgacom” links) which suggest that Mr. Lahoti and the Respondent were well aware of the Complainant, and expected and intended to attract to the Respondent’s Website Internet browsers who were looking for sites operated by the Complainant.
5. There can be no doubt that the Respondent was well aware of the Respondent and its CERTIPOST mark when it registered the Domain Name in early 2008. The Response makes it clear that the Respondent is controlled by Mr. Lahoti, and Mr. Lahoti was the registrant of the Domain Name (d/b/a “Crosspath.com”) at the time of the late 2007 – early 2008 correspondence in which the Complainant asserted its rights.
6. The subsequent use of the Domain Name by the Respondent appears to have continued the earlier use by Mr. Lahoti, at least until the time of the Panel’s visit to the Respondent’s Website (when the Respondent appears to have been making virtually no practical use of the Domain Name).
7. The circumstances described above fall squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain (click through advertising revenues), Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
The Complainant having proved all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
F Reverse Domain Name Hijacking
As the Complaint has succeeded, there is no basis for a finding of reverse domain name hijacking, or other bad faith use of the Policy by the Complainant. The Respondent’s allegations in that regard are accordingly dismissed.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <certipost.com> be transferred to the Complainant.
Warwick Smith Sole Panelist
Dated: September 25, 2008.
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