Richard L. Dubnow v. International Brains Center S.L.
Case No. D2008-1537
1. The Parties
1.1 The Complainant is Richard L. Dubnow, of Oregon, United States of America, represented by The DuBoff Law Group, LLC, United States of America.
1.2 The Respondent is International Brains Center S.L. of Madrid, Spain.
2. The Domain Name and Registrar
2.1 The disputed domain name <image3d.net> (the “Domain Name”) is registered with Arsys Internet, S.L. dba NICLINE.COM (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2008. On October 9, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 9, 2008 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details (although, the Registrar failed to give billing contact details as required by paragraph 2(a)(i)(B) of the Rules for Uniform Domain Name Dispute Resolution Policy). In its verification response the Registrar informed the Center that the language of the registration agreement for the Domain Name was Spanish.
3.2 Paragraph 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) states:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
3.3 Accordingly, on October 15, 2008, the Center issued a Notice in both Spanish and English requiring the Complainant either to provide evidence of agreement between the parties as to the language of proceedings, to translate the Complaint into Spanish or to submit a request for English to be the language of these proceedings.
3.4 On October 15, 2008, the Complainant's lawyers sent a letter to the Center requesting that the language of the proceedings be English and pointing to pre-Complaint correspondence with the Respondent that was said to have been conducted in English. The Respondent did not file any submission in relation to the issue of language.
3.5 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 October 30, 2008. A hard copy of the Complaint was sent to the Respondent to its Madrid address in accordance with paragraph 2(a)(ii) of the Rules by courier. However, on arrival at that address the addressee refused to take delivery of that package giving the reason (according to the courier company's records) that “they did not order and refused this delivery”.
3.6 In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2008.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 27, 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.
4. Factual Background
4.1 The Complainant is an individual who gives an address in Oregon. He produces custom View-Master style viewers & reels and 3-D promotional tools used for marketing purposes1. He operates a web site in relation to these activities from the domain name <image3d.com>.
4.2 The business operating from this web site uses the trading name Image3d, although there is a notice at the bottom of the home page for the web site that states “Image3D is a registered trademark of Xyzyx LLC”.
4.3 The Complainant is the owner of United States registered trademark No. 2,515,875 dated December 4, 2001 in the Supplemental Register for the text IMAGE3D. He is also the owner of international trade mark registration application No. 948761 dated July 27, 2007. The application designates one country i.e. China. The exact status of the Chinese mark is not described in the Complaint2.
4.4 The Respondent would appear to be an entity based in Madrid.
4.5 The WhoIs database details for the Domain Name records the Domain Name as having been created on August 20, 2002. As at the date of this decision it is being used for the Spanish language web site of the Respondent that would appear to offer and advertise computer generated 3D animation and pictures and related services.
4.6 The Complainant's lawyers sent a letter before action to the Respondent on July 29, 2008 claiming that the Domain Name infringed their client's intellectual property rights. It demanded that the Respondent transfer the Domain Name to their client and asked for the payment of attorney fees. It stated that unless the Respondent acquiesced in these demands within 15 days, the Complainant would “take appropriate legal action to redress these wrongs, including commencing an online domain name arbitration with WIPO”.
5. Parties' Contentions
A. Complainant
5.1 The Complainant refers to its United States and international registrations and claims that the Domain Name is identical to that mark.
5.2 The Complainant's contentions in relation to rights or legitimate interest are set out in a single paragraph. In the circumstances, it is easiest to set out this paragraph in full. The Complainant contends as follows:
“Respondent has not been commonly known by the domain name and Respondent is not making a legitimate non-commercial fair use of [the] domain name. Respondent uses the domain name in question to divert visitors away from Complainant's site. As the Panel stated in V&S Vin & Sprit AhB,
WIPO Case No. D2002-0926 (December 3, 2002), the use of somebody else's trademark in a domain name attracts potential customers seeking information about the goods associated with the trademark. Even if a visitor will quickly realize that he is not visiting the trademark owner's official site, “the Respondent will already have diverted the visitor” to his own activities. Id. Respondent's use of Complainant's trademark will attract people seeking information about Complainant's products and thus, divert potential customers away from Complainant.”
5.3 The Complainant's contentions in relation to bad faith registration and use are even shorter. They are:
“Claimant has attempted to contact Respondent to discuss the purchase of the domain name registration but Respondent has not replied to phone calls or letters. A letter sent by Complainant to Respondent is provided as Annex 4”.
B. Respondent
5.4 The Respondent did not file any Response.
6. Outstanding Procedural Issues
6.1 There are two procedural issues in this case. The first is whether or not the Respondent has had sufficient notice of these proceedings. The second is the language of these proceedings.
6.2 The question of notice can be dealt with relatively easily. As was discussed by this Panel in Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886, there is no specific requirement of notice under the Policy or Rules. There is instead an obligation on the Center under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent”. This paragraph then goes on to specify what steps will discharge this obligation. The Center will also take notice of contact details for the Respondent that the Complainant has provided under paragraph 3(b)(v) of the Rules. This places an obligation on the Complainant to:
“Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, …”
6.3 Both the Complainant and the Center have had difficulty communicating with the Respondent in this case. Emails forwarded to the email address provided for by the Respondent in the WhoIs details for the Domain Name appear to have bounced back. The Complainant also complains that they have had difficulty sending faxes to the Respondent using the fax number provided in the WhoIs details.
6.4 The Panel is also concerned that the Complainant may have failed to comply with its obligations under paragraph 3(b)(v) in this case. Although care needs to be taken in judging the Complainant's conduct by reference to what appears on the face of a web site operating from the Domain Name after the Complaint was filed3, the Panel notes that at the date of this Decision, as viewed by the Panel the web site contact page provides an additional email address that was not disclosed in the Complaint.
6.5 Nevertheless, the Panel believes that the Center has satisfied its obligations under paragraph 2(a) of the Rules. A respondent has an obligation to ensure that the contact details provided in relation to a domain name remain current, accurate, and complete. A respondent cannot complain about difficulties in being given notice of proceedings in circumstances where those difficulties have arisen out the respondent's own conduct. Further, in this case it appears that the Respondent appears to have deliberately refused receipt of a hard copy of the Complainant. That of itself suggests that the Respondent had received some form of notice that proceedings had been or were likely to be commenced. If it had not, why would it refuse to receive documents from the Center? Further, a respondent cannot avoid proceedings under the Policy by deliberately refusing to accept the documents in which those proceedings are set out.
6.6 The issue of language is more difficult. Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”
6.8 In this case the language of the relevant Registration Agreement was Spanish. There is no suggestion that the Complainant's lawyers would have had any difficulty in establishing this to be the case4. However, the Complaint did not raise the issue of language in the Complainant. In the circumstances, it would appear that the Complainant's lawyers either knew and ignored the requirements of paragraph 11(a) of the Rules or did not bother to turn their minds to the question of language.
6.9 When the language issue was brought to the Complainant's attention by the Center the Complainant requested that the proceedings be conducted in English. It would appear that although the Center was unable to successfully send the Language of Proceedings documents using the contact information provided in the Complaint, registrar verification, and WhoIs (including a translation of the Center's language notification in Spanish) by email it was able to send these to the Respondent by fax.
6.10 Given that the Respondent did not respond to these documents, the Center proceeded (as its notification had clearly warned) on the basis that the Respondent did not object to the proceedings taking place in English, but that in any event the Center would accept a Response in Spanish or English for ultimate determination by the Panel on appointment. This was a perfectly sensible way for the Center to have proceeded. Nevertheless, the Panel still believes in light of the requirements of paragraph 11(a) of the Rules, that it must turn its mind to the question of the appropriate language for these proceedings.
6.11 The Panel is far from certain that English is the appropriate language in this case. The Complainant's suggestion is that it should be in English because pre-action “correspondence” was in English. This is wholly unconvincing. The correspondence in question was the single letter before action sent by the Complainant on July 29, 2008. There is no evidence that when this was received the Respondent understood what it said. It certainly did not subsequently enter into “correspondence” with the Complainant in English. This letter is a completely inadequate basis upon which to justify the Panel ordering that proceedings should continue in English under paragraph 11(a) of the Rules.
6.12 There are some other factors in this case that might suggest that the Respondent has some understanding of English. First, it might be said that the domain name contains the English word “image”. However, the Spanish and English words for “image” are very similar and therefore not much can be read into this. Second, there is the fact that the name of the Respondent, International Brains Center, is in English. In Burger King Corporation v. SC Burger King S.R.L.WIPO Case No. DRO2008-0012 the three person panel held that this factor, together with a host of other factors suggesting an understanding of English, were sufficient to justify the panel making an order under paragraph 11(a) that the proceedings be in English. However, the Panel does not believe that this factor on its own is sufficient.
6.13 Therefore, the only other reason why in this case English might be appropriate is the Respondent's failure to respond to the Center's language notification. The Panel is doubtful that this really is sufficient. Even if it were, this is the sort of case where serious consideration would also need to be given to ordering the Complaint to translate the Complainant into Spanish (as to which power see again the Burger King case already identified) under paragraph 10 of the Rules.
6.14 Nevertheless, in the rather unusual circumstances of this case the Panel is prepared to make an order under paragraph 11(a) that these proceedings continue in English without making any order for translation under paragraph 10. As was recorded in Groupe Auchan, supra ultimately the key question when it comes to language is whether a party has been unfairly prejudiced by the choice of language. The Panel is concerned that there is a risk that the Respondent may have been prejudiced in terms of an ability to articulate its case (even though its actions to date suggest it might well have continued to ignore these proceedings even if they had continued in Spanish). However, as will become apparent, the Respondent has not suffered any prejudice so far as the actual outcome of the case is concerned. Therefore, any order for translation would in reality serve little practical purpose.
7. Discussion and Findings
7.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
7.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out his case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
7.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
7.4 The Panel will consider each of these requirements in turn.
A. Identical or Confusingly Similar
7.5 This primary trade mark that the Complainant relies upon is registered in the United States Supplemental Register. The current Panel, not comprising a trained United States trade mark lawyer, is somewhat ill-equipped to form an independent view as to the status of a mark on the Supplemental Register and in particular whether this can constitute a mark for the purposes of the Policy. Nevertheless, there have been a number of cases under the Policy where the status of marks on the Supplemental Register have been considered by panelists who are familiar with United States trade mark law.
7.6 For example, in America's Community Bankers Corporation v. Charles R. Wing and Wing Broadcasting Inc.,
WIPO Case No. D2000-1780 the panel held as follows:
“Complainant's marks AMERICA'S COMMUNITY BANKER and AMERICA'S COMMUNITY BANKERS are registered on the Supplemental Register. The Trademark Act provides for the registration of trademarks on either the Principal or Supplemental Registers. Generic terms are not registrable on either Register. PTO Trademark Manual of Examining Procedure (TMEP) § 1209.01(c). Descriptive marks, those that immediately convey information about a quality or characteristic of a product or service, are registrable on the Supplemental Register. TMEP § 202.02(b). The Principal Register is designed for arbitrary and suggestive terms, and for descriptive marks that have acquired distinctiveness. Id. The Supplemental Register is reserved for marks capable of distinguishing applicant's goods or services not registrable on the principal register . . . 15 U.S.C. § 1091(a). Unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right[s] to use the mark. 15 U.S.C. § 1115(a). Registration of a mark on the Supplemental Register has been held to constitute an admission that the mark is merely descriptive. E.g., Clairol Inc. v. Gillette Co., 389 F2d 264 (2d Cir. 1968). However, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness. 15 U.S.C. § 1095.
Complainant has neither alleged in its Complaint nor submitted any evidence that its admittedly descriptive marks AMERICA'S COMMUNITY BANKER and AMERICA'S COMMUNITY BANKERS have acquired distinctiveness. Relying solely upon Complainant's registrations on the Supplemental Register, the Panel must conclude that Complainant's marks AMERICA'S COMMUNITY BANKER and AMERICA'S COMMUNITY BANKERS are descriptive terms that have not acquired distinctiveness. Accordingly, the Panel finds that Complainant has not proven the first prong of the UDRP, which provides that the complainant must have rights in the mark upon which the complaint is based. For this reason, the Panel need not examine whether the Domain Names are confusingly similar to Complainant's marks AMERICA'S COMMUNITY BANKER and AMERICA'S COMMUNITY BANKERS. Consequently, the Panel need not examine whether Respondent has any rights or legitimate interests in the domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org>, or whether Respondent registered and used those domain names in bad faith. The Panel's finding under UDRP Section 4(a)(i) does not mean that Complainant's marks AMERICA'S COMMUNITY BANKER and AMERICA'S COMMUNITY BANKERS have not acquired distinctiveness, but rather simply means that no evidence of acquired distinctiveness has been presented to the Panel.”
7.7 Similarly, but more recently, in Doheny Plumbing, Inc. v. PAO Industries, Inc.,
WIPO Case No. D2007-1827 the panel stated:
“Where a mark is registered on the Supplemental Register, previous decisions under the Policy have found that a Complainant must show that the mark is used as a trademark or service mark and in such use, the mark has acquired distinctiveness for the Complainant's goods or services because Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration. Kip Cashmore v. URLPro,
WIPO Case No. D2004-1023 (internal punctuation and citation omitted); see also The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],
WIPO Case No. D2007-1438. As in Kip Cashmore, [t]he record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin of services. In this proceeding, the Complainant has provided no evidence to establish that the mark at issue has acquired distinctiveness.”
7.8 So what the Panel must do in a case such as this is to consider whether there is sufficient evidence before it to justify a conclusion that the Complainant's mark on the United States Patent and Trademark Office Supplemental Register has acquired distinctiveness. However, there is simply no evidence before the Panel that would justify a finding of acquired distinctiveness in this case. The Complainant does not describe the size of his business, the extent of its advertising or provide any evidence that the term IMAGE3D is known by any element of the public as a trade mark identifying the Complainant's goods or services. There is virtual silence as to the Complainant's activities. In the circumstances the Complainant's claim on the basis of the United States trademark inevitably fails.
7.9 Although the Complainant primarily relies upon its United States trademark, it also mentions an international trade mark registration and gives the number for that mark. No further information or evidence is provided. This is to say the least problematic. Care needs to be taken when referring to such things as “international” trade marks. What is really meant by this is an application under the Madrid System. The Panel can do no better than the description of the system that is supplied on the WIPO web site. It reads as follows:
“The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland.
Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office … An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated subsequently”.
7.10 So a mere reference to an “international” or “Madrid” mark is really not good enough. What a Complainant should do is show that he has obtained at least one national mark through the Madrid system.
7.11 In this case the Panel has to a certain extent done the Complainant's job for him. It has undertaken a search for this mark on the on-line WIPO Madrid and Romarin databases. It shows that the Complainant has designated one country in respect of this mark (namely China) and that although the date of registration is July 27, 2007, the “Date of recording (date of notification from which the time limit to notify the refusal starts)” is January 31, 2008. There is no evidence before the Panel as to whether the Chinese mark has been granted. This might not be necessary if there were evidence that the Chinese registry had not refused protection by the “specified period”. However, the difficulty in this case is that the usual relevant refusal period under the Madrid System is one year and sometimes it is 18 months5. In other words, there is no evidence of a granted national mark under the Madrid system. The best that can be said is that the Complainant has the equivalent of a national trade mark application in China and it is reasonably clear that a trade mark application will ordinarily not constitute trade mark rights for the purposes of the Policy6.
7.12 In the circumstances, the Complainant has failed to make out the requirements of paragraph 4(a)(i) of the Policy. This is sufficient to decide this case in favour of the Respondent. However, the Panel considers it appropriate also to consider the position under the other elements of the Policy. It is also appropriate to do this for other reasons that will become apparent in this decision.
B. Rights or Legitimate Interests
7.13 There is a difficulty is assessing rights or legitimate interests in this case in that there is a failure on the part of the Complainant to describe in any detail how the Domain Name is being used by the Respondent. The Complainant contends that the Respondent's web site operating from the Domain Name “advertises 3-dimensional and stereoscopic graphics”. It is always dangerous for a panel to assess a Respondent's activities from the way in which the domain name is being used after a complaint has been filed7. However, that allegation would seem to be broadly consistent with that which at the date of this decision appears at the Domain Name; i.e. a Spanish language web site that appears to offer and advertise computer generated 3D animation and pictures and related services.
7.14 The Complainant does not contend that the referenced business represented on the web site is in any way a sham. Accordingly, there is a serious question as to whether the Respondent has rights or a legitimate interests within the meaning of paragraph (c)(i) of the Policy. This gives as an example of rights and legitimate interest:
“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”.
7.15 The use of a domain name in relation to a genuine offer of goods and services will not save a respondent if the domain name was chosen with a view to taking advantage of the reputation that exists in a complainant's mark. However, for the reasons that are given under the heading of “bad faith” below, there is no evidence to suggest that this is so in this case.
7.16 In the circumstances the Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the Policy.
7.17 The Complainant refers to the decision of V&S Vin & Sprit AhB,
WIPO Case No. D2002-0926. He appears to contend that this case shows that where there is a diversion of internet visitors from a complainant to a respondent, then this is of itself sufficient to justify a finding that there are no rights and legitimate interests. If so, this would be a distortion of what that case held. In the V&S case it was clear that the respondent was well aware of the complainant's trade mark at the time that the relevant domain names were registered. It is in light of this crucial finding of fact that the panelist's comments as to initial interest confusion have to be understood. This case is no authority for the proposition that initial interest confusion without more is enough to satisfy paragraph 4(a)(ii). Even if it were such authority, this would be a misreading of how the Policy operates. Where initial interest confusion is relied upon it is necessary to show that this confusion was intended by the respondent (see, for example, Gorstew Limited v. Worldwidewebsales.comWIPO Case No. D2002-0744).
7.18 Further, even if unintentional initial interest confusion were sufficient (which it is not), the Complainant has not brought forward a single piece of evidence to suggest that there has been any initial interest confusion in this case.
C. Registered and Used in Bad Faith
7.19 The WhoIs details for this Domain Name suggest that it was initially registered on August 20, 2002. There is no evidence before the Panel that suggests that the Domain Name came into the hands of the Respondent at some later date. Accordingly, the question of bad faith registration needs to be addressed as at August 20, 2002.
7.20 By this date the Complainant had obtained its trade mark on the United States Supplemental Register and the relevant entry suggests that the mark had in fact been first used in commerce in 1999. However, there is no evidence that by August 2002 the mark IMAGE3D had developed a reputation in the United States as indicating the goods or services of the Complainant. Indeed, the fact that the Complainant was only able to obtain a trade mark on the Supplemental Register suggests the opposite. In the circumstances, and in the absence of any evidence to the contrary, any suggestion that the reputation of the Complainant's IMAGE3D mark extended to Spain, where the Respondent is located, would be fanciful.
7.21 Further, the mark IMAGE3D contains a strong descriptive element. It is obviously suggestive of any business or activity associated with the provision of three-dimensional images. It is an obvious choice for a domain name for a web site that the Complainant describes as “advertis[ing] 3-dimensional and sterioscopic graphics” and for a web site of the sort that at the date of this decision operates from the Domain Name.
7.22 In short, there is nothing to suggest that at the time of registration that the Respondent had any knowledge of the Complainant, let alone that the Domain Name was registered with the intention of taking advantage of the Complainant's mark. In the absence of such evidence, the Complainant's claim was from the start doomed to failure. Indeed, the absence of any evidence as to the reputation of the Complainant's business at any time including at the date that these proceedings were commenced, means that this would have been so regardless of the date upon which the Respondent took possession of the Domain Name.
7.23 In the circumstances the Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the Policy.
C. Reverse Domain Name Hijacking
7.24 Paragraph 15(e) of the Rules provide that:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding”.
7.25 Reverse Domain Name Hijacking is defined in the Rules, paragraph 1 as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
7.26 It is rare for a panel to make a finding of reverse domain name hijacking unless a respondent has positively asked for such a declaration. Indeed, it is often difficult for a Panel to come to such a finding without the respondent putting forward a positive case in this respect as it is the respondent that bears the burden of proof in relation to this issue (see, for example, the Henkel case discussed in greater detail below).
7.27 Nevertheless, it is a finding that a panel can consider of its own motion. Indeed, arguably given the mandatory wording of paragraph 15(e), in an appropriate case it would be obliged to do so.
7.28 In Henkel KGaA v. Mr. Augustin SbintaWIPO Case No. DRO2008-0003 this Panel accepted the respondent's characterisation of reverse domain name hijacking as when “the Complainant knew or should have known at the time it filled the Complaint that it could not prove one of the essential elements required by the Policy”. On reflection the formulation “ought to have known” is open to criticism. Intent and knowledge are at the heart of a determination of bad faith so far as a respondent's conduct under paragraph 4(a)(iii) of the Policy is concerned, and arguably it also should be when considering the issue of reverse domain name hijacking.
7.29 Here the Complainant has failed to show not just one but every one of the requirements of the Policy. Its “marks” were plainly inadequate for the purposes of the Policy. Further as this Panel has already described, the Complainant's allegations as to bad faith were doomed to failure. This is a case where on the evidence before the Panel the Complainant “ought to have known” he would not succeed. Can one go further and say that the Complainant is likely to have known that he could not prove the relevant elements of the Policy? On balance, the Panel believes that one can. The Complainant was represented by a law firm that appears to be familiar with intellectual property issues. Therefore, it is hard to believe that the Complainant was not advised as to his true chances of success in these proceedings.
7.30 There are also a number of particular factors that point in the direction of bad faith in this case. They are as follows:
(i) The commencement of proceedings in English, when it should have been apparent from the start that at least the default position in these proceedings was that they be in Spanish;
(ii) The cursory description of the Complainant's international trade mark rights without the provision of supporting evidence. One cannot help but suspect that why the mark was described in such a cursory manner is that a fuller explanation would have made it clear that the “international trade mark rights” did not stand up to scrutiny;
(iii) The failure by the Complainant to address what is probably the central and key issue in any proceedings under the Policy; namely the Respondent's knowledge of the Complainant's business and mark and the Respondent's intention in registering and using the Domain Name;
(iv) The choice of authority in this case and the selective quotation made from it. Of course, the Complainant's lawyers must be an advocate for their client's case. As such one would expect them to seek to interpret past decisions under the Policy in a manner which supports that case. However, tens of thousands of cases have been decided under the Policy to date. It is all too easy for a party to cherry pick decisions that do not fairly represent the operation of the Policy and/or to quote sentences out of context so as to distort what was actually being said in a case. There comes a point at which this practice is no longer robust and fearless advocacy but becomes an attempt to positively mislead the Panel as to how the Policy operates.
7.31 Any one of these points when considered in isolation might be explained away. However, when considered in combination they become overwhelming.
7.32 There is perhaps one factor that points in the other direction. That is the actions of the Respondent in relation to these proceedings. It would appear that the Respondent has deliberately sought to avoid engaging in any sensible way in these proceedings, even to the extent of trying to avoid being formally notified of their commencement. It has done the Respondent no favours and this sort of conduct can often be a potent pointer away from a finding of reverse domain name hijacking. Such behaviour will often reinforce the worst suspicions of a complainant. Why, goes the thinking, did the respondent act in this way if it had acted in good faith or had rights or interests to protect?
7.33 However, the Panel does not consider that the Respondent's actions in this case are such as to excuse the Complainant's commencement of these proceedings. Perhaps in other cases they might raise doubts as to a respondent's motives. However, this is not a case where the Complainant brought a substantive case as to the Respondent motives. Arguably, the Complaint arguably did not seek to address the issue of motive at all. He certainly did not address the issue of the Respondent's motivation at the date of registration.
7.34 Further, it would appear that the first time that the Respondent had any hint of these proceedings was a letter sent from lawyers from a foreign jurisdiction in a language that was not the Respondent's native language. The letter may not have been understood. Even if it was understood, the letter not only threatened “online domain arbitration with WIPO”, but also claimed infringement of intellectual property rights in the United States. If the Respondent (which on the evidence before the Panel had no activities in the United States) decided at that stage to stick its head in the sand and to ignore these threats of infringement, its behaviour may have gained it no credit, but it is not wholly inexplicable.
7.35 In the circumstances, the Panel makes a finding that the Complaint was brought in bad faith and constitutes an abuse of these administrative proceedings.
8. Decision
8.1 For all the foregoing reasons, the Complaint is denied. Further the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of these administrative proceedings.
Matthew S. Harris Sole Panelist
Dated: November 30, 2008
1 None of this is apparent from any of the papers filed in these proceedings but it is apparent from the web site which the Complainant claims he uses in connection with his activities.
2 As is explained in greater detail later on in this decision, whilst the international registration is identified, no details of that registration have been provided. These details are, however, available from the WIPO Madrid Express “www.wipo.int/madrid/en/services/madrid_express.htm” database.
4 The Panel notes that in italics at the top of the English language version of the Registrar's registration agreement set out at “www.nicline.com/company/obligations.htm” is to be found the following words in italics:
“This translation is provided by nicline.com as a courtesy. However, the Domain Holder should take into account that the original language of the registration agreement is the Spanish language. … ”
5 See para 02.08 of the Guide to the International Registration of Marks available at “www.wipo.int/madrid/en/guide”
6 For a discussion of the issue see for example HQUK Limited v. Head Quarters,
WIPO Case No. D2003-0942
7 It is all too easy for a respondent to change what appears on the web site in an effort to mislead a panel as to the nature of the activity being conducted. There is therefore a danger that a panel may draw false conclusions of fact in relation to matters in respect of which a complainant has not had a chance to make any submissions.
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