The Complainant is Sébastien Paches of Morges, Switzerland, self-represented.
The Respondent is Dvlpmnt Marketing, Inc. of Charlestown, Saint Kitts and Nevis, represented by Faia & Associates, LLC, United States of America (“United States”).
The disputed domain name <paches.com> (the “Disputed Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”).
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2019. On April 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the Disputed Domain Name. The Center has also indicated to the Complainant that the language of the Registration Agreement was English, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceeding.
The Complainant filed a Complaint translated into English on April 8, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Response was filed with the Center on April 30, 2019. The Center appointed Nick J. Gardner as the sole panelist in this matter on May 8, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant filed a supplementary filing on May 6, 2019 (the “Complainant’s Supplementary filing”).
The Complainant is an individual resident in Switzerland. The Complainant owns Swiss trademark 696051, which is for a stylized design of a shirt collar accompanied by the word PACHES in a stylized font. The proprietor of the trademark in the official documentation is simply described as “Pachès” but the Panel accepts this is the Complainant. This trademark was applied for on November 24, 2016 and registered on December 2, 2016. It is referred to in this decision as the “PACHES trademark”.
The Respondent is a dealer in domain names. The Respondent acquired the Disputed Domain Name on September 17, 20131. It is linked to a website (the “Respondent’s Website”) which contains pay-per-click (“PPC”) links. None of these links have any relevance to the Complainant or his proposed business (as to which see below).
The Disputed Domain Name was originally registered on October 1, 2010. It was acquired by the Respondent on December 7, 2013. Negotiations have taken place between the Complainant and the Respondent regarding a possible purchase of the Disputed Domain Name but these have not resulted in agreement (see further below).
The Complainant says he intends to start a business selling clothing under the name “paches”. In preparation for this he registered the PACHES trademark and has acquired various other domain names which include the term “paches”. He says however that he requires the Disputed Domain Name as otherwise it might be used to interfere with his business for example to sell counterfeit products.
The Complainant says that the Disputed Domain Name is identical to the PACHES trademark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. He says it is not the Respondent’s name and the Respondent has no other legitimate interest in it.
The Complainant says that the Disputed Domain Name has been registered and used in bad faith. His case in this regard is explained as follows.
“The defendant, whose business model is to buy domain names in large quantities and then resell them with a very comfortable margin, does not use PACHES.COM and wished to sell it to the Complainant for 6500 US $ (six thousand five hundred US dollars).
During the negotiation, the Complainant proposed the final amount of 500 US $ to acquire the name PACHES.COM. The defendant refused.
The defendant has already been convicted by WIPO following a complaint by GeoGebra GmbH. This case is referenced WIPO No. D2016-1419 (Annex 5)”.
The Complainant also says elsewhere in the Complaint that:
“The domain name PACHES.COM held for 19 years by the defendant is not linked to any website / blog and / or other accounts facebook / instagram / Twiter ... etc.
The domain name is currently parked, which suggests that the defendant is using cybersquatting on the domain name PACHES.COM”
The Respondent says that as a dealer in domain names it acquired the Disputed Domain Name before the Complainant registered his trademark and that the Complainant does not as yet have any business using the term “paches”. It says in those circumstances the Complaint cannot succeed. The Respondent says the parking site to which the Disputed Domain Name is linked has never contained any links of any relevance to the Complainant or his proposed business. The Respondent therefore denies having registered or used the Disputed Domain Name in bad faith.
The Panel declines to admit the Complainant’s Supplemental Filing. There is no provision in the Rules allowing such a filing. The Panel has discretion to admit it, but in this case declines to do so. In large measure it repeats arguments contained in the Complaint and to the extent it introduces additional material that seems to the Panel to be material which could have been included in the original Complaint. For completeness the Panel notes that the Complaint’s supplemental filing goes into some detail about how the parking page linked to the Disputed Domain Name behaves when accessed by the Respondent. The Panel does not consider such evidence likely to be helpful, as the relevant behaviour is likely to have been determined by pre-programmed algorithms which are likely to have been influenced by various factors, such as the geo location of the device used to access the page, browser history on that device and so on. In any event nothing in this evidence would alter the Panel’s analysis below.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has rights in the PACHES trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. This trademark is a device mark but features prominently as part of the registered device the word “paches” and in these circumstances the Panel concludes the Disputed Domain Name is confusingly similar to the PACHES trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v. Jacob FoundationWIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v. Nett CorpWIPO Case No. D2001-0031. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
In view of the Panel’s finding in relation to bad faith (see below) it does not need to resolve this issue.
The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Panel’s analysis has not been helped in this case by the fact that the Respondent has provided no information about how or why it decided to buy the Disputed Domain Name. The term “paches” is not a word in English. There is no evidence before the Panel of it being a word in any other language. It is however a six-letter character string which is readily pronounceable, and also is similar to the English word “patches”. It corresponds to the Complainant’s family name but there is no evidence before the Panel of how common a family name that may be, either in Switzerland or elsewhere. Overall taking all these factors into account the Panel considers the Disputed Domain Name is likely to have at least some potential intrinsic value and could have been obtained by the Respondent because of its intrinsic value and without any knowledge of the Complainant. Whether or not that was the case is a question of fact to be decided on the evidence. The difficulty the Complainant faces is that there is absolutely no evidence of him having any reputation anywhere. The Complainant has not yet launched his proposed business. His Swiss trademark was applied for in 2016, three years after the date the Respondent acquired the Disputed Domain Name so can be of no possible relevance. Overall there is no evidence at all before the Panel of any reason at all as to why the Respondent could or should have known of the Complainant when it registered the Disputed Domain Name. The Panel agrees with the Respondent that it is a well-settled principle in UDRP jurisprudence that when the Respondent’s acquisition of the subject domain name predates the securing of the Complainant’s trade or service mark rights in the name, there is no finding of bad faith on the part of the Respondent see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at Section 3.8.1:
“3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below [which are not relevant here], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”.
The Panel’s assessment takes into account that professional dealers in domain names may be held to a higher standard to avoid the registration of trademark-abusive domain names as stated at section 3.2.3 of WIPO Overview 3.0.
Although this technically ends the matter, as this element of the Policy requires a finding of both registration and use in bad faith, the Panel also finds that the Respondent has not used the Disputed Domain Name in bad faith. It is well accepted by previous panels that using a domain name to resolve to a “pay per click” parking page is not per se use in bad faith. It is only when it is apparent that such use is actually targeting the complainant that it may amount to use in bad faith. Here the hyperlinks do not refer to the Complainant or relate in any way to his proposed business. In this case the Panel finds that there is no evidence that the Respondent, who is involved on a large scale in the domain name broking and holding business, has ever actively targeted the Complainant.
The evidence establishes that the Respondent sought a relatively substantial sum for the Disputed Domain Name when the Complainant sought to buy it. This fact seems to be the entire basis of the Respondent’s case. The Complainant was prepared to pay to buy the Disputed Domain Name, but not the price the Respondent asked. This fact alone cannot establish bad faith. If the Respondent’s interest in the Disputed Domain Name is legitimate it is entitled to seek whatever price it wishes. Although in some circumstances asking a very large price may give rise to an inference of bad faith registration and use, the Panel does not consider that to be the case here, given the lack of any evidence suggesting any reasons why the Respondent should have known of the Complainant or his intended business. It may well be the case, as the Complainant suggests, that he would like to own the Disputed Domain Name and finds himself possibly at a commercial disadvantage if he cannot, but these are not reasons supporting a finding of bad faith.
The Panel does not consider that the single previous adverse UDRP finding against the Respondent relied upon by the Complainant alters this analysis. That case involved materially different facts.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
Reverse Domain Name Hijacking (“RDNH”) is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides 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 an abuse of the administrative proceeding”.
As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by UDRP panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights; (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database; (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument; (iv) the provision of false evidence, or otherwise attempting to mislead the panel; (v) the provision of intentionally incomplete material evidence – often clarified by the respondent; (vi) the complainant’s failure to disclose that a case is a UDRP refiling; (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis; (viii) basing a complaint on only the barest of allegations without any supporting evidence”.
On balance the Panel does not consider the Complainant’s conduct warrants a finding of RDNH. It considers this is a case which should never have been brought and where the Complainant had no prospects whatsoever of succeeding. As such it is potentially within (i) above. There is also some evidence suggesting this is a situation whereby the Complainant has failed to buy the Disputed Domain Name at a price he was prepared to pay, and then adopted an alternative strategy of an unmeritorious Complaint. It is also the case (as the Respondent points out) that the Complainant was less than frank when seeking to buy the Disputed Domain Name claiming he wanted it for personal use as it corresponded to his family name and not mentioning his proposed business or asserting any legal claim. However the Complainant is not represented and it seems to the Panel that on balance he has simply failed to properly understand the Policy rather than acted deliberately in bad faith. Accordingly the Panel has concluded the Complainant’s conduct does not fall within the above guidelines and does not deserve the censure of a finding of RDNH.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: May 14, 2019
1 The Complaint assumes that the Respondent has owned the Disputed Domain Name since it was first created in 2000. The date of September 17, 2013 has been provided by the Respondent. Since this date is more favourable to the Complainant the Panel will assume it is accurate.
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