The Complainant is Editions Milan of Toulouse, France, represented by Cabinet Plasseraud, France.
The Respondent is Secureplus, Inc. of Lady Lake, United States of America, represented by Traverse Legal, PLC, United States.
2. The Domain Name and Registrar
The disputed domain name <kokeshi.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2010. On April 20, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 on April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Response was filed with the Center on May 7, 2010.
The Center appointed Sir Ian Barker as the sole panelist in this matter on May 21, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a French publishing company which, for 20 years, has sold magazines and books dedicated to children. In March 2009, it published the first volume of a collection named “Kokeshi”.
The Complainant is the owner of the French trademark KOKESHI No. 3468858. It was first registered on December 11, 2006 and was later transferred to the Complainant by the original registrant.
The Complainant is the owner of the domain name <kokeshi-leclub.com> which it registered on November 24, 2009 and which relates to a collection of books relating to dolls named “Kokeshi”.
The name “Kokeshi” refers to a certain kind of traditional Japanese dolls.
The disputed domain name was registered in the name of the Respondent on March 6, 2001 by a Mr. S. Hill who, while serving in the United States Army in Japan between 1996 and 1999, became aware of Kokeshi dolls traditionally made in Northern Japan.
The disputed domain name resolves to a website that displays the statement “This domain name is for sale”. The Internet archive Wayback machine indicates that there has been little activity at the disputed domain name site since registration.
The Complainant, since November 24, 2009, attempted to negotiate with the Respondent for the purchase of the disputed domain name. It is not necessary to record the details of the negotiations except to note that, on December 7, 2009, the Respondent asked for USD 16,700 and on January 14, 2010, the Complainant offered USD 1,500 for the disputed domain name.
5. Parties' Contentions
A. Complainant
The disputed domain name is identical to the Complainant's registered trademark in which it has rights.
Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to registration of the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is not involved in an activity linked to that name. It filed three United States trademark applications in completely different commercial fields. The marks it sought to register have all been cancelled because the owner was not able to comply with the obligation to justify a use. The domain name <secureplus.com> registered by the Respondent cannot be reached.
These factors indicate an initial wish to be involved in Internet activity but are not in relation with books or toys linked to Japan. Therefore, the Respondent cannot claim any right or legitimate interest in the disputed domain name.
The disputed domain name was registered and is being used in bad faith because it resolves to a website that displays a statement that the disputed domain name is for sale. Also, the lack of activity over many years indicates lack of use and points to the Respondent acquiring the disputed domain name, not to use it, but to prevent others who have a legitimate interest in doing so by selling it or renting it for valuable consideration.
The Respondent's bad faith is demonstrated by the offer to sell the disputed domain name for an “outrageous” price and by not accepting the reasonable offer made by the Complainant, which was much higher than the cost of registration.
The Respondent is using the disputed domain name for commercial gain and it is being used in bad faith.
The Respondent is not able to prove any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. It is not known by the disputed domain name.
B. Respondent
Once Mr. Hill became aware of Kokeshi dolls from his Army service in Japan, he registered the disputed domain name so he could later create an online market place for these dolls. However, as his assignment with the Forces changed, he delayed his development of the site. All of this is attested to by a sworn declaration by Mr. Hill made under penalty.
The Complainant has no rights in a generic or descriptive domain name, particularly when its trademark was registered at least five years after the registration of the disputed domain name.
The Respondent still intends to develop the website and will do so when it has the time and means.
There is no bad faith registration or use. “Kokeshi” is a descriptive term in the Japanese language. The Respondent has produced definitions and general material relating to Kokeshi wooden dolls. The Respondent negotiated with the Complainant only after the Complainant originally made an offer.
The disputed domain name is currently parked and awaiting development and, as such, displays contextual advertisements relating to Japanese dolls.
The Complainant must establish rights in its mark which accrued before the registration of the disputed domain name. The Complainant's trademark is only for use in association with published books and compact discs. It does not give the Complainant exclusive right to the descriptive name “Kokeshi”. The Complainant cannot monopolise the use of generic terms and common words.
There are over 1,000,000 uses of the word “kokeshi” in various domain names.
The Respondent has rights and legitimate interests in the disputed domain name. It registered it for its descriptive meaning and has priority to the use of the term. Just because the Respondent has not been able to devote time and resources to developing the disputed domain name, because Mr. Hill's active service in the Army, that does not imply that it has no rights in it.
The Respondent's registration predated any date by which the Complainant can claim trademark rights.
The Respondent was unaware of the Complainant at the time of the registration, according to Mr. Hill's affidavit. As there is no bad faith registration, the Complaint must fail. It is well-known that under the Policy, bad faith must exist both at the time of registration and at the time of the Complaint.
The Respondent did not register the disputed domain name primarily for the purpose of selling it to the Complainant because it did not know of the Complainant at the time and, in any event, the Complainant then had no trademark or interest in the word “kokeshi”. Passive holding of the disputed domain name is not proven but even if it is, passive holding is not evidence of either good or bad faith. It must be interpreted in the context of each case.
The Respondent seeks a finding of Reverse Domain Name Hijacking against the Complainant because the Complainant knew or should have known that it could not prove at the time it filed the Complaint that the disputed domain name had been registered in bad faith. It must have known that the registration of the disputed domain name preceded by 5 years the registration date of its trademark. This is shown by a statement in the Complaint to that effect. Even a rudimentary examination of the Policy and the application of the Policy should have made clear to the Complainant that it could never have succeeded and there could be no reasonable and credible belief that it was entitled to succeed.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the registered trademark in which the Complainant has rights. It does not matter that the trademark is for a generic word such as “kokeshi” which is a dictionary word in the Japanese language for a certain kind of doll. The Panel cannot in this proceeding second-guess the decision of the trademark registration authorities in France to grant a trademark.
The fact that the Complainant acquired trademark rights long after the disputed domain name was registered does not prevent a finding that the mark and the disputed domain name are identical – See Overview of WIPO Panel Views on Selected UDRP Questions Paragraph 1.4 and the authorities there referred to.
Accordingly, the Panel is satisfied that the first requirement of Paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests and
C. Registered and Used in Bad Faith
These headings are considered together. In this particular case, the Panel is of the opinion that if the Respondent is found to have registered the disputed domain name in good faith, then it can be said to have rights or legitimate interests in the disputed domain name. While it is true that the Complainant gave no rights to the Respondent to use the trademark KOKESHI, this fact does not help the Complainant at all in the particular circumstances of this case, in which the registration of the domain name predates the existence of the Complainant's trademark. A domain name can be ordered transferred under the Policy only if the three Policy criteria in that regard have been demonstrated. Here, the Respondent's registration of the disputed domain name predates the Complainant's rights to use a trademark by 5 years at least.
After considering all the evidence submitted by the parties to this proceeding, the Panel concludes that the Respondent registered the disputed domain name in good faith in 2001. Mr. Hill has deposed that he had learnt about Kokeshi dolls whilst on military service in Japan. He had the idea of developing a website which would focus on those dolls and as such a website has not yet come into being.
The Respondent may have held the disputed domain name passively for 9 years. However, in the Panel's assessment, the Respondent was perfectly entitled to register the disputed domain name, and the fact that he may not have used it visibly in the interim does not of itself suffice to overturn that entitlement in the particular circumstances here. The Respondent has provided a plausible explanation for his registration of the domain name, and in the panel's view it could not reasonable be said that it was registered it in bad faith because, at the time Mr. Hill could not have known of the Complainant's 2009 initiative of publishing children's books under the title “Kokeshi”. Nor is there any evidence before the Panel to establish that the Respondent had the possibility of the Complainant obtaining such rights in future in mind when registering the disputed domain name. Therefore, the Panel finds that the Respondent registered the disputed domain name in good faith, and in the absence of any currently abusive use, would on that basis appear to have a right or legitimate rights in it.
The Panel considers it irrelevant to consider the history of the transactions between the parties regarding the sale and purchase of the disputed domain name. The Respondent was perfectly entitled to deal with the disputed domain name. It was just its good fortune that Mr. Hill decided years ago to register a domain name in connection with an interest he had in Kokeshi dolls, that has turned out to have a popular use and which is sought to be used by a business of which he then could have had no knowledge.
The Panel also considers it irrelevant to consider that the Respondent may have been associated with other trademarks that were struck off the Register for whatever reason. That has nothing to do with the present dispute. Nor does the Panel need to consider bad faith use since the Complainant has failed to prove bad faith registration.
D. Reverse Domain Name Hijacking
It is difficult to resist the Respondent's submission that there be a finding of Reverse Domain Name Hijacking in this case. The Complainant did not seek leave to make any submissions in opposition once it had received the Response.
As the Complainant itself acknowledges, it knew at the time it filed the Complaint that the Respondent had registered the disputed domain name 5 years before its predecessor in title to the trademark had transferred it to the Complainant in 2006. Authorities such as Proto Software, Inc. v Vertical Axis, Inc.,
WIPO Case No. D2006-0905 and Futureworld Consultancy (Pty) Limited v. Online advice,
WIPO Case No. D2003-0297 indicate that Reverse Domain Name Hijacking may be found “if the Complainant knew or should have known at the time that it filed the Complaint that it could not prove the domain name was registered in bad faith.”
It was said by the Panel in the Proto case:
“…the Complainant is represented by Counsel who even on a rudimentary examination of the Policy and its' application in this area should have appreciated that the Complaint could not succeed where the Respondent's domain name had been registered three years prior to filing a trademark application or actual use of the mark.”
In that case the disputed domain name had been registered 3 years before the Complainant's trademark registration.
Put another way in Sydney Opera House Trust v. Trilynx Pty Ltd,
WIPO Case No. D2000-1229, the Respondent needs to show that the Complainant knew of the Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration, but nevertheless brought the Complaint. Here, although the Complainant could perhaps have been excused an absence of awareness of the Respondent's rights or legitimate interests in the domain name, given the seeming lack of active use, the lack of Respondent bad faith at the time of registration of the disputed domain name was fairly obvious.
In determining whether a finding of reverse domain name hijacking is warranted, the Panel should consider “malicious intent and recklessness or knowing disregard of” evident absence of Respondent bad faith. See Goldline International v. Gold Line,
WIPO Case No. D2000-1151 and GLB Servicos Intereativos SA v. Ultimate Search,
WIPO Case No. D2002-0188. While there is no malicious intent, the Panel considers that there must have been at least an element of knowing disregard in this case.
In the Panel's view, what has come to be called the “Octogen” line of decisions – a development of fairly recent origin whereby some panels have held that in some circumstances bad faith registration and bad faith use do not both have to be separately proved or inferred – would not have assisted the Complainant in this aspect of the case. The Complainant was obviously unaware of this development in Policy jurisprudence otherwise it might have invoked it. Besides, the facts in this case would not easily bring paragraph 4(b)(iv) of the Policy into contention. That paragraph has been used by some panels as justification for the disjunctive approach to paragraph 4(a)(iii) of the Policy.
Furthermore, this Panel does not accept the Octogen line of cases which it sees as misinterpreting the Policy wording. This Panel adopts with respect the dissertation refuting the Octogen approach found in the decision of a very experienced Panel in Canon S.p.A. v Intelli-Pet, LLC,
WIPO Case No. D2009-1716. Although the situation of a blatant bad faith use where there is no proof of a bad faith registration may be thought anomalous, unless and until the Policy wording has been changed, there is no warrant for refusing to follow established Policy jurisprudence developed from the inception of the Policy. The disjunctive approach to bad faith demonstrated by the Nominet and similar Policies, used for “.uk” and “.nz” disputes for example has much to recommend it. However, it is not for this Panel to in effect alter the wording of the existing UDRP.”
Accordingly, the Panel is satisfied that a declaration of Reverse Domain Name Hijacking should be made against the Complainant.
7. Decision
For all the foregoing reasons, the Complaint is denied. A declaration of Reverse Domain Name Hijacking is made against the Complainant.
Sir Ian Barker Sole Panelist
Dated: June 10, 2010
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