The Complainant is Ville de Paris of Paris, France, represented by Nataf Fajgenbaum & Associés, France.
The Respondent is Salient Properties LLC of Racine, Wisconsin, United States of America, represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <wifiparis.com> (“the Domain Name”)is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2009. On September 28, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On September 28, 2009, Dotster, Inc. 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 Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response October 28, 2009. The Response was filed with the Center October 28, 2009.
The Center appointed Warwick Smith, Christiane Féral-Schuhl and Tony Willoughby as panelists in this matter on November 19, 2009. 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
The Complainant is the territorial authority responsible for the administration of the city of Paris, France. In 2001, it embarked on a project for the development of new technologies, information, and communications in Paris. One of its concerns was to find solutions to the “digital fracture” Internet access problem which existed in the city, and to make high speed Internet access available to all citizens and visitors. A “New Technologies Authority” was created by the Complainant in 2001, and that Authority has responsibility for co-ordinating and running the city's numerous digital projects. A special name and logo was adopted to symbolize the city's activism in the field of information and communications technology, and in March 2002 that name and logo (PARVI PARIS VILLE NUMERIQUE, with a distinctive ellipse device, and the word PARVI appearing in larger font than the other words – “the PARVI mark”) was registered in a number of international classes, including classes 35, 38, and 41. The services covered by the PARVI mark include reference to computer communications via the Internet (“Communication par terminaux d'ordinateurs (internet)”).
A document of the Complainant headed “Nouvelles Technologies à Paris”, produced with the Complaint, refers to the “PARVI (Paris Ville Numérique)” programme. The programme is concerned with the integration of the various steps the Complainant has been taking to develop the city's Internet infrastructure, including both fibre optic cable access and wireless networks. A summary in this document, at section “IV”, makes it clear that improving Wifi Internet access within the city is a significant goal of the PARVI project.
The Complainant has now established some 400 Wi-fi terminals, or “hotspots”, in more than 260 municipal sites across Paris. The Wi-fi service is accessed by the use of a Paris WI-FI pass (the “pass Paris Wi-fi”), which is available on request to any interested person. The Complaint did not state when the “pass Pari Wi-Fi” service was introduced.
According to the Complaint, the Complainant has also organized a promotion event named “Paris Wi-Fi”, but the Complainant did not provide any detail of when that event occurred, or the manner in which it was apparently promoted.
On June 2, 2004, the Complainant registered a figurative mark consisting of the single word “Paris”, in upper case lettering, set against a distinctive device (“the Paris device mark”). The Paris device mark covers numerous goods and services, including “telecommunication services” in international class 38.
The Complainant provided with the Complaint an extract from what the Panel takes to be the Complainant's principal website, namely the website at “www.paris.fr” (“the Complainant's website”). A page headed “Dossier: Expérimentations WiFi - Paris.fr”, printed on September 23, 2009, describes some of the steps taken by the Complainant in the Wifi field. The first page is prominently headed “PARVI, Paris Ville Numérique”, and the expression PARVI features in several parts of the text on this page (e.g. “PARVI accompagne plusieurs projets d'expérimentation du Wi-fi, afin d'aider au développement et à une meilleure utilisation de cette technologie de la mobilité”). The Paris device mark does not appear on this web page. A web page headed “Pass Paris Wi-Fi - Parvi.fr”, also printed on September 23, 2009, deals specifically with the Paris Wi-Fi pass. Generally, this page provides information on such matters as how the pass works, where in the city the hotspots are to be found, and the security of communications made using the service. Further information is obtainable by clicking on one of the listed hotspot sites. The Paris device mark does not appear on this page either.
The Respondent and the Domain Name
The Domain Name was originally registered on May 31, 2004. It was acquired by the Respondent, following the expiry of an earlier registration, on or about July 9, 2008.
The domain name <wifi.com> is also owned by the Respondent. It was acquired in or about July 2006.
Subsequent to the acquisition of the <wifi.com> domain name, the Respondent entered into an agreement with certain other parties to form WiFi.com LLC, a corporation organized under the laws of the State of Washington in the United States. The Respondent holds approximately one-third of the voting rights in WiFi.com LLC.
The Respondent produced a copy of an operating agreement between it and its partners in WiFi.com LLC. This document stated that the purpose of WiFi.com LLC was “to own, manage, develop, and sell the internet domain WiFi.com, and any other businesses that the Board of Managers deems appropriate …”.
WiFi.com LLC operates a website at “www.wifi.com”. This website provides a directory of free public Wifi hotspots around the world. The Respondent says that details of the hotspot locations may be accessed by a map interface, or by downloadable software.
The Respondent has also registered a number of location-specific “wifi” domain names, at which it operates websites which are specific to particular place names which are included within these domain names. These websites, one of which is the website at the Domain Name (“the Respondent's website”), utilize the same database as that used for the “www.wifi.com” website.
The Respondent listed approximately 140 other location-specific domain names which it has acquired (ie in addition to the Domain Name). Each consists of the expression “wifi” coupled with the name of a city, country, or other location (e.g. <wifiargentina.com>, <russiawifi.com>, <beverlyhillswifi.com>). The Respondent says that each of these domain names points to a web page which contains a navigable and re-sizeable map of the indicated area, icons indicating the location of the Wifi hotspots on the map, links to certain downloadable software, and links to other geographically relevant <Wifi.com> sites.
The Panel has visited the Respondent's website. It is in the English language, and features a distinctive “wifi.com” logo which is said to be present on all of the Respondent's “wifi” websites. Clicking on “Home” provides a link to the website at “www.wifi.com”. There is a map on the Respondent's website showing where wifi hotspots can be found in the city of Paris, and some text explaining how the site can be used to locate an appropriate hotspot. There are also some Google advertisements, in the form of click-on links to third party websites offering Internet-related goods or services.
In its Complaint, the Complainant drew the Panel's attention to a website operated by the Respondent at “www.salientproperties.com” (“the Salient website”). The Salient website describes the Respondent as a “virtual and real estate company”, which owns over 500 domain names and actively buys, sells, and develops domain names. There is a section of the Salient website called “Virtual”, where the following appears:
“Geo-WiFi Parking System: We are now accepting geographic ‘wifi' domain names into our specialized parking system. This is how it works; we have a customized WiFi.com template which back links to our partner site. All PPC advertising codes are provided by you. This means you get 100% of all revenue made on your geo-wifi domain names. You get content relevant pages AND all the proceeds. Some examples from our program include, BangkokWiFi.com/GermanyWiFi.com/QueenWiFi.com.”
The Complainant asserted in its Complaint that a number of “wifi” domain names are included in a list of domain names which are for sale on the Salient website. In its Response, the Respondent did not deny that allegation. Rather, it objected to the Complainant arguing (“on the basis that the Respondent does indeed park other non-wifi-related domain names”) that the Respondent's various “wifi” websites are mere “parking” websites.
Pre-commencement correspondence
The Complainant sent cease and desist letters to the Respondent on July 31, 2008 and March 4, 2009. The Respondent did not reply to either letter.
The Respondent stated in the Response that it was specifically advised not to respond to these letters. It alleged that correspondence sent to the Complainant's counsel in the course of two prior United States court proceedings in which the Complainant had been the defendant1 had been ignored, and it expressed concern at certain of the Complainant's tactics adopted in those proceedings which allowed the Complainant to avoid hearings of the plaintiffs' claims on the merits.2 The Complainant's motion to dismiss one of the claims for lack of subject matter jurisdiction was granted on August 9, 2007, and the claim in the other case was dismissed on September 18, 2007. However the Respondent asserts that there are a number of other domain name owners in the United States who are disputing demands from the Complainant to transfer their domain names to it, and that these other parties are anxious to have the Complainant submit to the jurisdiction of the United States courts to have these disputes resolved. The Respondent accuses the Complainant of adopting bullying tactics in these claims while at the same time maneuvering to avoid having the disputes dealt with on their merits in the American courts.
The Respondent's decision to decline to respond to the Complainant's cease and desist letters in this proceeding, appears to have been made, at least in part, with a view to the Complainant filing the present proceeding (and so, in the Respondent's belief, making itself subject to the jurisdiction of the United States District Court).
The Respondent also referred to a French court decision, Ville de Parisv.Paris Nord Services S.A.R.L.3, in which the Complainant had unsuccessfully relied on the Paris device mark against the defendant, a company which provided building cleaning services in an area north of the city of Paris under a figurative PARIS NORD SERVICES PROPRETÉ mark. The French court held in favor of the defendant in that case, and awarded costs against the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to the Paris device mark. The Paris device mark is used for Wifi services, as is demonstrated by the official documents annexed at annex 4 to the Complaint. The only part of the Paris device mark which could be reproduced in a domain name (the word “Paris”) has been reproduced in the Domain Name, and that word is per se the salient feature in the Domain Name; the generic expression “wifi” is descriptive of services linked to the Internet, and as such is not distinctive. The predominant term in the Domain Name (the word “Paris”) has already been appropriated by the Complainant for services in international class 38, and has been used by the Complainant in its public utility activities. The likelihood of confusion is greater because of the widespread notoriety and fame of the Paris device mark throughout the world. Internet users accessing the Respondent's website may be led to believe that they are dealing with a website run by the Complainant to provide official information about wifi locations in Paris.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent has not made any use of the Domain Name (or demonstrable preparations to use the Domain Name) in connection with any bona fide offering of goods or services. The Salient website reveals that the Respondent's one and only purpose of this parking website is to make money in marketing geographic “wifi” domain names. (The Complainant referred to the statement from the “Virtual” page of the Salient website which is reproduced at page 5 of this decision).
(ii) The Respondent exclusively seeks to derive profit or commercial gain.
(iii) The Respondent has made an illegitimate commercial and unfair use of the Domain Name.
3. The Domain Name was registered and has been used in bad faith, having regard to the following:
(i) The Paris device mark is a well-known sign for telecommunication services, and in particular Wifi services. The Respondent could not deny that it was aware of the Paris device mark.
(ii) The Respondent has acquired and been using the Domain Name for the purpose of selling it to a competitor of the Complainant at a profit.
(iii) By systematically combining city and country names with the expression “wifi”, the Respondent creates new domain names with the sole intention of exploiting their fame and widespread notoriety, by taking advantage of the likelihood of confusion and/or association which necessarily arises in the minds of the public. Specifically in respect of the Domain Name, the Respondent has intentionally attempted to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Paris device mark as to the source of the Respondent's website. That has been done for commercial gain.
B. Respondent
The Respondent contends:
1. The PARVI mark is irrelevant, and the Domain Name bears no resemblance to the Paris device mark other than the fact that both include the geographical term “Paris”. The Complainant's argument boils down to an assertion that the word “Paris” belongs to it, and that any service provided in or relating to the city of Paris, which uses the geographic name of the city, is identical or confusingly similar to the Paris device mark.
2. The Complainant has offered no evidence of rights in the word “Paris” standing alone. It has not argued that it possesses any relevant rights apart from the Paris device mark.
3. Where a complainant relies on a figurative mark, the Policy requires consideration of the significance of what is left when one ignores the graphical indications or stylization (citing, among other cases, Brisbane City Council v. Warren Bolton ConsultingPty Ltd,
WIPO Case No. D2001-0047, where it was held that a stylized mark including the words “Brisbane City” may have acquired distinctiveness, but the words “Brisbane City” by themselves were merely descriptive of a geographical location and had no secondary meaning). In many instances, it has been said that when one “peels away the graphic element”, all that remains is a descriptive or generic word.
4. The Complainant fails to mention that not only has it failed to successfully assert the present claim in the French Courts, but it was fined for attempting to do so (citing the Ville de Paris v. Paris Nord Services S.A.R.L. case, supra). The Court in that case noted that there are over 5,000 registered trademarks in France that include the word “Paris”, and concluded that the consumer is accustomed to seeking commercial operations run by firms with names that include the word “Paris”. The Complainant was ordered to pay the defendant the sum of 12,000 Euros in that case.
5. In another French case, Commune de Levallois Perret/Loïc v. 1 & 1 Internet4, the Court held that geographical names are not subject to special protection, as it is considered to be in the general interest to preserve their availability. The plaintiff in that case was fined 1,000 Euros for its assertion that its operation of a television service called “Levallois-TV” entitled it to ownership of the domain name <levallois.tv>, at which the defendant operated a website relating to television services provided in Levallois.
6. Apart from the Complainant's registered graphical mark (i.e., the Paris device mark), the term “Paris” can only be understood as a non-distinctive geographic term (referring to City of Hamina v. Paragon International Projects Ltd.,
WIPO Case No. D2001-0001, and Article 3 of First Council Directive 89/104/EEC).
7. The Respondent has a right or legitimate interest in respect of the Domain Name, having regard to the following:
(i) The Respondent's website is not a parking page; it is part of a substantial business enterprise.
(ii) Even where a complainant has established distinctiveness in a term comprising a geographic name for the purposes of paragraph 4(a)(i) of the Policy, geographic terms remain available for use in connection with a purely descriptive purpose (citing City of Hamina, supra). In the City of Hamina case, the Respondent had registered and used the domain name <portofhamina.com> as part of a business concept involving the use of domain names of the type “port of [name of port].com”, to present information intended for users of the respective ports or services rendered there or in connection with the ports by port authorities, servicing companies, etc. That business practice was not shown to be in disaccord with honest practices in industrial and commercial matters, so that the respondent had acquired a legitimate interest in the domain name <portofhamina.com>. The City of Hamina conclusion is directly prescriptive of the result in this case: the Panel only has to substitute the expression “wifi” for the words “port of”.
(iii) Each of the Respondent's web pages is in English, and is prominently branded with the logo of Wifi.com LLC. In no way do the pages suggest that the website is an official website of the government of the place in question. The Respondent's website is an honest indication of where one might find Wifi in Paris.
(iv) The Domain Name had been used for a legitimate purpose, as part of an enterprise of substantial value, well prior to notice of the present dispute.
8. The Respondent did not register, and has not used, the Domain Name in bad faith. Bad faith requires proof of a specific intent directed towards the Complainant, and arising from rights known by the Respondent to belong to the Complainant at the time the Domain Name was registered. In this case, the Respondent acquired the Domain Name for perfectly legitimate business purposes, and even if the Respondent had been aware of the Paris device mark, it would not have believed that the registration of the Paris device mark has any bearing on the use to which the Respondent has put the Domain Name. The law of the Mutual Jurisdiction on this point is clear, as is the law of France.
9. The Complainant has been guilty of reverse domain name hijacking, evidenced by the following:
(i) The Complainant's failure to disclose in its certified “complete” Complaint the relevant outcome of litigation involving the same mark in France.
(ii) The Complainant having been fined for asserting a similar claim in France.
(iii) The Complainant having engaged in a pattern of evading service of process to avoid adjudication of the same claim.
(iv) The Complainant's disingenuous claim in United States litigation to be immune from civil suit, followed by admitting to United States jurisdiction in this proceeding.
(v) The Complainant's outstanding mischaracterization of the Respondent's website.
The Panel is requested to consider whether the Complainant has brought the Complaint in good faith, having regard to its broader pattern of behavior, in which it has actively sought to avoid judicial determination of the question presented in this proceeding, whenever its claim of rights in “Paris” as a trademark or service mark have been challenged. The Complainant had every reason to know that its claim would not be successful, and having failed to successfully claim “PARIS” as a mark in a Parisian Court, the Complainant had no excuse for filing the present proceeding. A finding of reverse domain name hijacking should be made in order to deter the Complainant from the type of threatening and then cowering behavior it has pursued thus far without consequences to itself, and by which it has likely obtained domain names from other domain name registrants who have been less inclined or equipped to assert their rights.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed 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”.
B. Identical or Confusingly Similar
The Panel is not satisfied that the Complainant has proved this part of the Complaint.
The Complainant clearly has “rights” in the Paris device mark for the purposes of paragraph 4(a)(i) of the Policy. But it has not proved that it holds any “Paris” word mark, or asserted that it holds any “Pariswifi”, or “Wifiparis” mark (figurative or word). The word “Paris” on its own is prima facie no more than a geographic indicator - the name of a very large, well known city. Thousands of traders no doubt find it necessary to describe their goods or services as coming from, or being offered in, Paris.
That said, the Complainant has clearly been very active in promoting Internet access in Paris, and it does provide a network of wifi hotspots across the city. But the Complainant has not produced any evidence to show that it has been marketing or promoting its wifi activities under or by reference to the Paris device mark, on which it relies. On the contrary, the evidence produced by the Complainant at annex 4 to the Complaint suggests that such activities have probably been promoted primarily under or by reference to the PARVI mark. For example, in a “Summary” forming part of the “Nouvelles Technologies à Paris” document, the PARVI mark is reproduced precisely beside the word “Sommaire”, and at section IV of the Summary there is express reference to achieving wifi coverage across the city (“…2 - assurer la couverture WIFI de Paris”). Section IV of the Summary is headed with the expression “Paris, ville numeriqué: le plan “Très Haut-Débit”“ (a reference to a form of high speed broadband), and the text of the Summary makes it clear that “Le Programme PARVI” covers both fibre optic cable connections and a wireless network (réseau sans fil”) for the city.
The Complainant did say that it has organized a promotion event named “Paris Wifi”, but it did not produce any documents relating to that promotion, or state when it took place.
The Complainant has produced evidence that it provides free access to the network of Wifi hotspots through the use of the “Pass Paris Wifi”. The Complainant's website explains that the “Paris Pass Wi-Fi” is a new service established by the Complainant and the Ile de France Région. Under a heading: “How to link with the Paris Pass Wi-Fi?”, a person wishing to avail himself or herself of one of the hotspots is invited to follow six steps, the first of which is to identify a sign bearing a “Wi-Fi logo Paris” (“le logo Paris Wi-Fi”) in the relevant park or other hotspot location where the visitor happens to be. It is not clear from the Complainant's website what “logo” is referred to. The person wanting to use the facility has only to set up his or her portable computer, select the Orange network followed by any website, and then select the “Paris wi-Fi 2 hours” pass. The “pass” appears to be no more than a wifi network access password, and the expression “Pass Paris Wifi” entirely descriptive.
The confusing similarity question can be difficult where a complainant relies on a figurative mark comprising a logo and a descriptive or geographical expression. On one approach, the logo element of the complainant's mark is ignored in the comparison with the disputed domain name, on the basis that it is normally the words in a figurative mark which convey the mark's principal meaning, or impression. But where the words in the mark are purely descriptive, or the name of a well-known place, the words alone will not convey any meaning other than the descriptive or geographical one (unless of course the descriptive words have acquired, through use, a secondary meaning denoting the complainant's particular goods or services – something which has not been alleged in this case).
While some UDRP panels have adopted a fairly benign construction of paragraph 4(a)(i) of the Policy when comparing a figurative mark which incorporates descriptive words with a disputed domain name comprised of those words (e.g. Sweeps Vacuum & Repair Center, Inc. v.Nett Corp.,
WIPO Case No. D2001-0031, and RuggedCom, Inc. v. James Krachenfels,
WIPO Case No. D2009-0130), each case must be judged on its own facts. Unlike the facts of the Sweeps and RuggedCom cases, the Domain Name in this case is not identical to the textual element of the relevant mark – the expression “wifi” has been added. And if one compares the respective visual and aural impressions created by the Domain Name and the Paris device mark, there is seen to be no real likelihood of confusion. All that is common is the word “Paris”, a word which the Panel accepts is probably used by hundreds if not thousands of people as part of the names or descriptions of their businesses or other enterprises. If the logo element of the Paris device mark were taken into account in the comparison, the Paris device mark would be even more distant in appearance from the Domain Name.
Looking at the respective overall impressions conveyed by the Domain Name and the Paris device mark, the latter conveys nothing about the concept of wireless Internet access. The Domain Name on the other hand, immediately alerts the reader to the likelihood that any website at the Domain Name will be concerned with wifi Internet access in the city of Paris.
It is true that both the Complainant and the Respondent provide information about the location of wifi hotspots in the city of Paris, and many UDRP Panels have upheld claims of confusing similarity where the respondent has formed the disputed domain name by adding to the complainant's mark a descriptive or generic expression which is descriptive of the very goods or services which the complainant provides under that mark (see by way of example, The Ritz Hotel, Limitedv. Damir Kruzicevic,
WIPO Case No. D2005-1137). But in this case, the Complainant has failed to produce any evidence that it has promoted or marketed its wifi hotspots in Paris under or by reference to the Paris device mark. All that is left in common is the word “Paris”, and in the Panel's judgment that single element of commonality between the Domain Name and the Paris device mark is too weak to justify a finding of confusing similarity.
The Panel's view on this part of the Complaint is supported by the Brisbane City Council case referred to by the Respondent. That case was concerned with the domain name <brisbanecity.com>, and among other contentions, the Complainant contended that that domain name was confusingly similar to a claimed common law trademark right in a mark consisting of the words “Brisbane City” combined with a particular corporate logo. The panel acknowledged the possibility that such a common law trademark might exist, but nevertheless rejected the complainant's claims, saying:
“It does not follow, however, that the Complainant has obtained common law trademark rights in the words BRISBANE CITY on their own. Indeed, this Panel concludes that the Complainant has not obtained such rights in those words on their own. The reason for this is as previously stated – the words BRISBANE CITY, on their own, do not perform the function of a trademark. Thus, whatever common law rights the Complainant may have obtained in relation to its logo together with the words BRISBANE CITY, those rights do not extend to the words BRISBANE CITY alone.”
So in this case, the Complainant's rights in a Paris-plus-logo mark (the Paris device mark) do not confer any rights in the word “Paris” alone. Without such rights, the Complainant's confusing similarity argument under para 4(a)(i) of the Policy cannot succeed: the Paris device mark is too dissimilar to the Domain Name for the “confusing similarity” test to be met.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may 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:
(i) 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
(ii) 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
(iii) 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 to tarnish the trade mark or service mark at issue.
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such 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”.
The Panel is satisfied that the Complaint must also fail under this heading. The Respondent appears to be operating a genuine business providing information about the location of Wifi hotspots in various locations around the world, and the Domain Name appears to be descriptive (or at least highly suggestive) of the services which are provided at the Respondent's website. The Center's online document: “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, at paragraph 2.2, states:
“If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant's rights in that word, then it has a legitimate interest.” (referring to Allocation Network GmBH v. Steve Gregory,
WIPO Case No. D2000-0016; Porto Chico Stores, Inc. v. Otavio Zambon,
WIPO Case No. D2000-0270; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,
WIPO Case No. D2000-1005; and Gorstew Limited v. Worldwidewebsales.com,
WIPO Case No. D2002-0744).
In this case, it appears to the Panel that the Respondent has been using the generic expressions “wifi” and “Paris” in combination, to describe a business which that combination of words is entirely apt to describe or suggest.
The Panel does not consider that the material on the Salient website to which the Complainant referred affects that view. Certainly that material appears to suggest that the Respondent has been willing to sell at least some of its “wifi” domain names, but that is not enough to establish that the Respondent has been “targeting” the Complainant's rights in the Paris device mark. Nor does the fact that the Respondent has apparently been prepared to allow third parties to park “wifi” domain names with it (on the basis that those third parties would be entitled to arrange their own website advertising and/or sponsored links to other parties' sites, and to retain all pay-per-click revenue from those arrangements), sufficient to establish that the Respondent lacks any rights or legitimate interests in the Domain Name. It appears that websites operated at such domain names would still provide site-specific wifi information provided from the Wifi.com L.L.C. database, and would essentially be providing the same service as that provided by the Respondent at its own websites.
D. Registered and Used in Bad Faith
The Complaint also fails on this ground, essentially for the same reasons which are set out in sections 6B and 6C of this decision. The evidence shows that the Respondent appears to have registered the Domain Name for the same purpose it had already registered numerous other “wifi” domain names, namely to provide information about the location of wifi hotspots in a particular city. The Respondent is perfectly entitled to provide that service, or to transfer the Domain Name to a third party who will do so in good faith: paragraph 4(b)(i) of the Policy was not intended to apply to domain names which are not confusingly similar to a complainant's mark. The lack of confusing similarity between the Domain Name and the mark relied upon also disposes of the Complainant's argument under paragraph 4(b)(iv) of the Policy.
E. Reverse Domain Name Hijacking
Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that a complainant has brought the complaint in bad faith (for example in an attempt at reverse domain name hijacking), or was brought primarily to harass the domain name holder. “Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,
WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Al Jazeera went on to note that:
“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line,
WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited,
WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate Search,
WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.”
The Panel is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking.
First, the Complainant's case under paragraph 4(a)(i) of the Policy was not so hopeless as to be beyond reasonable, good faith argument. The Complainant proved that it is the owner of the Paris device mark, and the only textual element of the Paris device mark is included in full in the Domain Name. Numerous panel decisions under the Policy have found that the incorporation of a complainant's mark in full in a disputed domain name may be sufficient to establish confusing similarity (see for example, Nokia Group. v. Mr. Giannattasio Mario,
WIPO Case No. D2002-0782; The Ritz Hotel, Limited v. Damir Kruzicevic,supra; and Quintessentially (UK) Limited v. Mark Schnorrenberg/ Quintessentially Concierge,
WIPO Case No. D2006-1643, to name three), and some panels have held that the device elements of a complainant's mark may be ignored when comparing that mark with the disputed domain name (see, for example, Sweeps Vacuum & Repair Center, Inc., supra, and the case referred to by the Respondent, Tesla Industries, Inc. v. Stu Grossman d/b/a SG Consulting, NAF Claim No 0547889). Furthermore, the Complainant and the Respondent do provide the same (or at least overlapping) services, and numerous UDRP panels have regarded that as a factor pointing in favour of a conclusion of confusing similarity (The Ritz Hotel, Limited v. Damir Kruzicevic, supra, is an example of one such case).
The Complainant's argument under paragraph 4(a)(i) of the Policy has failed, but in the Panel's view the argument was not so obviously doomed to failure that the Complainant must have appreciated that that was the case, and made a bad faith decision to go ahead with the Complaint anyway.
Had the Complainant cleared the “identical or confusingly similar” hurdle, the focus of the Panel's enquiry would then have shifted to the Respondent's conduct, including consideration of the Respondent's reasons for choosing the Domain Name, and the use it has made of the Domain Name. On those parts of the Complaint, the Panel notes first that the Salient website appears to show that the Respondent has listed wifi domain names for sale, and has invited third party owners of wifi domain names to park those domain names with it, on the basis that the third party owners would retain pay-per-click advertising revenue arranged by them. Secondly, the Panel notes that the Respondent received the first of the Complainant's cease and desist letters very soon after it acquired the Domain Name in 2008, but made no reply to that letter. It also failed to respond to the follow-up letter sent in March of 2009.
Whatever the Respondent's reasons might have been for not replying to those letters, the Panel considers that the Complainant was entitled to take the Respondent's failure to reply into account in deciding whether it was justified in filing a complaint. And the combination of failure to respond to cease and desist letters, domain name trading in domain names which are relevant to a complainant's general field of activity, and the facilitation of pay-per-click advertising, is a combination which is frequently present in cybersquatting situations (even if the Complainant has failed to prove that this is such a situation).
The Panel does not derive much assistance from the United States litigation referred to by the Respondent. Certainly it would be a matter of concern if there were proof that the Complainant had been engaging in a pattern of harassing domain name owners by making unsupportable transfer demands, but that has not been established on the evidence produced by the Respondent in this case. On the face of it, the Complainant has done no more than adopt procedural tactics which appear to have been effective in having two separate court claims against it dismissed, and the Panel is in no position to say that the Complainant was not justified in using whatever tactical weapons were legally available to it to bring those proceedings to an early end. The plaintiffs wanted to fight on American soil in those cases, but the Complainant apparently did not - the Panel really cannot take much more than that from the evidence which has been produced.
The Respondent has not provided any details of the other prospective American plaintiffs who are said to be waiting in the wings, or of the merits (or otherwise) of the claims they are said to be ready to bring against the Complainant.
A panel would normally require much stronger prima facie evidence of a complainant's bad faith than that before it embarked on any investigation of the complainant's alleged bad faith or misconduct in earlier, unrelated litigation, whether actual or threatened. Administrative proceedings under the Policy tend not to be be an appropriate forum in which to conduct what would in effect be a “re-trial” of issues in other, unrelated cases.
The Panel has considered the Paris Nord case to which the Respondent referred, but again the Panel does not derive much assistance from the case. It was not a decision of an appellate court, and it appears to have turned on facts which are far removed from the facts in this proceeding. (A principal issue in Paris Nord was whether there was or would be a likelihood of confusion in the minds of the public, caused by the alleged similarities between the parties' respective marks and the services which each provided under its mark. That the Complainant did not persuade the Court in Paris Nord that there would likely be confusion between the Paris device mark and the PARIS NORD SERVICES PROPRETÉ figurative mark owned by the defendant, would not necessarily have told the Complainant anything about whether it would be able to show that the Domain Name in this proceeding was confusingly similar to the Paris device mark.) Nor was the Complainant “fined” in the Paris Nord proceeding, as the Respondent contended - an award of costs was made against it as the unsuccessful party, a different thing from a “fine”, which has punitive connotations. The Respondent has not provided any evidence which would suggest that this was anything other than a wholly unremarkable instance of a losing party in litigation being ordered to contribute towards the successful party's legal costs.
7. Decision
For the foregoing reasons, the Complaint is denied. The Respondent's request for a finding of reverse domain name hijacking is also denied.
Warwick Smith Presiding Panelist
Christiane Féral-Schuhl Panelist
Tony Willoughby Panelist
Dated: December 3, 2009
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