WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aveve N.V. v. Privacy Administrator, Anonymize, Inc. / Dennis Koorn
Case No. D2020-1115
1. The Parties
The Complainant is Aveve N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America / Dennis Koorn, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <arvesta.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2020, 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.
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 June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. On May 27, 2020, and June 4, 2020, the Center received email communications from Ray R / Bahram Shadabi, indicating that his company owns the disputed domain name and that he had received the notification of Complaint and its annexes. On June 17, 2020, a firm that had been retained to represent the Respondent in this matter requested an extension of the response due date. The due date for Response was extended to June 28, 2020. The Response was filed with the Center on June 28, 2020.
The Center appointed Rothnie, Warwick A., Flip Jan Claude Petillion, and The Hon Neil Brown Q.C. as panelists in this matter on August 12, 2020. 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
According to the Complaint, the Complainant’s corporate group was established in Belgium more than 100 years ago. Prior to 2017, it appears to have operated under the names “Aveve” and “Cobelal”. In 2017, it adopted the name “Arvesta” for some of the group’s activities including the provision of cattle fodder and the largest chain of garden centres in Belgium.
The Complainant owns a number of registered trademarks including for present purposes:
(a) Benelux Registered Trademark No. 1021783, ARVESTA, which has been registered since November 29, 2017 for a range of goods and services in International Classes 31, 35, 41, 42 and 44; and
(b) European Union Trademark No. 01658976, ARVESTA, which has been registered for the same goods and services since April 12, 2018.
The Respondent registered the disputed domain name on March 5, 2020, following a public auction of expired domain names. It appears that the Respondent’s winning bid was USD 4,567. There were some 48 other bidders, although the Complainant does not appear to have been one of the other bidders.
So far as the record in this proceeding shows, a company based in San Francisco called Arvesta Corporation registered the disputed domain name in 2003. It apparently provided crop protection products and services.
In 2006, that company became (or was taken over by) Arysta Lifesciences. Arysta Lifesciences continued to use the disputed domain name in connection with its business of providing crop protection products and services, at least to redirect to its own website at <arista-na.com>.
By August 2019, however, Arysta Lifesciences had become UPL Group or UPL OpenAg Group.
According to the Response, the Respondent has been registering common word domain names for investment and development since 2003.
The disputed domain name resolves to a website through which the Respondent offers the disputed domain name for sale. The website states “Arvesta.com is available for sale. Complete this form to get a price quote.” The website, however, does not include any pay-per-click advertising and there is no suggestion that the Respondent has made any other use of the disputed domain name online.
Five days after the Respondent became the registrant of the disputed domain name, the Respondent received an unsolicited offer to buy the disputed domain name. The Respondent replied that it would consider an offer of USD 42,000.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical 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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Preliminary Issue: Respondent Identity
The Registrar identified the privacy service Anonymize, Inc. as being the Respondent.
The Center received email communications from a certain Ray R / Bahram Shadabi, first referring to the disputed domain name as “my domain name” and subsequently indicating that his company owns the disputed domain name. However, the Response states that the Respondent is Dennis Koorn without providing further information about the Respondent’s identity, nor its potential connection with Ray R / Bahram Shadabi.
The Panel has discretion to determine the identity of the proper respondent or respondents.1 In this case, the Panel finds it appropriate to record in this decision both the name of the privacy or proxy registration service identified as the Respondent by the Registrar and the Center, and of the person identified as the Respondent in the Response.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
Disregarding the generic Top Level Domain (gTLD)2, “.com”, the disputed domain name is identical to the Complainant’s registered trademarks for ARVESTA.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
In response to the offer to purchase, the Respondent indicated it would consider an offer of USD 42,000, almost ten times the Respondent’s out-of-pocket costs.
These matters are sufficient to raise a prima facie case against the Respondent.
The Respondent denies being aware of the Complainant when the Respondent registered the disputed domain name. The Respondent also denies targeting the Complainant.
The Respondent points out that it is a legitimate practice under the Policy to register common or descriptive words for resale.
The Respondent says it is in the business of registering common words as domain names for investment and development purposes. Other names of this kind that the Respondent says it has registered include: <Acasta.com>; <Adent.com>; <Akkan.com>; <AltaVilla.com>; <Amplica.com>; <Ancore.com>; <Aquaterra.com>; <Arcadius.com>; <Aresa.com>; <Avango.com>; <Averli.com>; and <Avrigus.com>. The Respondent says that, historically, the Respondent has parked these underdeveloped domain names with parking services that share the advertising revenues generated.
According to the Response, the Respondent regularly monitors the domain name auctions offered by services like NameJet, GoDaddy and others for interesting and potentially valuable domain names.
The Respondent identified the disputed domain name as an expiring domain name. It considered the disputed domain name had potential for “brandability” as it had been held for a number of years by the previous owner.
The Respondent points out that the disputed domain name was previously held by Arvesta Corporation, so that the name was not exclusively associated with the Complainant. The Respondent also identifies a number of other third party users of “arvesta” including Arvesta Consulting, Lake Arvesta Farms LLC, Lake Arvesta, Arvesta Creek Alaska and Arvesta Kelly – a former professional basketball player. Arvest Bank also holds <arvesta.net>. The Respondent has also submitted evidence showing that the word “arvesta” also means “consider” in Estonian and “scar” in Finnish.
The Panel accepts that the registration of domain names consisting of acronyms, dictionary words or common phrases can be a legitimate practice under the Policy. See e.g., WIPO Overview 3.0, section 2.1 and 2.10.
The Panel does not consider that the word “arvesta” can fairly be described as a dictionary word or common phrase of the kind falling within, for example, the cases discussed in WIPO Overview 3.0, section 2.10.
The Complainant’s Press Release dated September 21, 2018 announcing adoption of the new name stated:3
“Arvesta is a name that combines three concepts: ‘Arvus’, the Latin word for plough, ‘harvest’ because we continually reap the benefits of what we’ve sown, and ‘invest’ because we focus on investing in people, brands, and innovation. The new Arvesta umbrella name will be the quality label for over 40 brands and a strong employer with 1,900 experts.”
There appears to be very limited third party use only. Indeed, one of the uses relied on by the Respondent is not use of “arvesta”, but “arvest” by Arvest Bank. That bank does have a registration of <arvesta.net> which, at the time this decision is being prepared, resolves to a pay-per-click parking page. It appears that the bank uses the domain name <arvest.com>.
The Response includes the results for Google searches on the terms “Arvesta Kelly”, “Arvesta Corporation”, “Arvesta Consulting” and “Arvesta Farms” as well as “Arvesta Estonia” and “Arvesta Finland”. Unsurprisingly, the search on a specific term such as “Arvesta Kelly” returns results for that gentleman. Two of the first three results for “Arvesta Corporation” are for the Complainant. Moreover, the first page of results for Google search on “arvesta” are entries associated only with the Complainant. The results on the second page are also for the Complainant save for one result relating to the Ancestry.com genealogy site.
The Panel considers this material does not support a finding that “arvesta” is a common dictionary or descriptive term. On the contrary, in the setting and context of use by the Complainant it is clearly a coined and distinctive term.
The word “arvesta” may have a dictionary or common meaning in Estonia and Finland, albeit different meanings. However, the Respondent is not using, and has not advanced evidence of demonstrable preparations to use, the disputed domain name in connection with either. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. See e.g., WIPO Overview 3.0, section 2.10.1.
The Respondent’s denial of knowledge of the Complainant when registering the disputed domain name must be accorded weight, even though its declaration in that regard cannot be verified.4
The objective evidence, however, discloses that the Respondent appears to have undertaken considerable research into the disputed domain name before bidding for it, given the Respondent supports its claim to the disputed domain name by reference to the third party uses and Estonian and Finnish usage referred to above. It appears highly likely that those searches must have revealed the Complainant and its rights in the name “Arvesta”, as shown by the Respondent’s own evidence (see the Google searches as mentioned above).
That conclusion is reinforced by the amount the Respondent indicated it was willing to consider selling the disputed domain name for: USD 42,000, a mere five days after winning the auction.
The Respondent has not exposed its reasoning in deriving that amount but, given it is almost ten times the amount paid at auction, it appears that the Respondent fully appreciated the disputed domain name’s significance and value. The suggestion that it was not planning to sell, but desired to develop it for possible future sale is belied by the admitted nature of the Respondent’s business and the fact that the disputed domain name resolves to a website offering it for sale.
Panels have frequently held that demands for such high prices by domainers indicate a lack of rights or legitimate interests and registration in bad faith. See e.g., WesTrac Pty Ltd v. Domain Asset Holdings, LLC, WIPO Case No. D2014-2032, Tracy Anderson Mind and Body LLC v. Domain Asset Holdings,
WIPO Case No. D2013-0699, Arne Jacobsen Design I/S v. Domain Administrator, DomainMarket.com,
WIPO Case No. D2017-0552, and Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com,
WIPO Case No. D2018-0540.
The Panel accepts that the present case is not a typical situation of “drop catching” where a trademark owner has let its domain name registration lapse in error. Nonetheless, the conduct of the Respondent smacks of the same opportunistic behaviour which the Policy was adopted to prevent.
In the Panel’s view, merely offering the non-descriptive disputed domain name for sale which is identical to the Complainant’s trademark, in circumstances where the Respondent appears highly likely to have been aware of the Complainant’s rights or, at the least, put on inquiry about those, does not give rise to rights or legitimate interests in the disputed domain name.
In these circumstances, the Respondent has not rebutted the prima facie case established by the Complainant. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The objective reasons leading to the Panel’s conclusions that the Respondent does not have rights or legitimate interests in the disputed domain name lead also to the finding that the Respondent registered and has used the disputed domain name in bad faith.
The Respondent contends that the offer to consider selling the disputed domain name for the sum of USD 42,000 does not constitute bad faith as it was made in response to an unsolicited offer to buy the disputed domain name. There are certainly cases where the naming of a price in response to an unsolicited request has not been considered to be use in bad faith. The fundamental difficulty for the Respondent in the present case, however, is that the website to which the disputed domain name resolves states it is available for sale and invites contact so a price quote can be provided. Even if this arrangement had not been put in place five days after the auction closed, the Respondent admits that its purpose in acquiring the disputed domain name was to invest in and develop the disputed domain name for resale.
As mentioned above, the disputed domain name is not descriptive and, in any event, the Respondent is not using the disputed domain name in a way that relates to the asserted descriptive meaning of the disputed domain name. Moreover, the disputed domain name is identical to the Complainant’s trademark and the available evidence shows that the Respondent either knew of, or was at the least put on inquiry about, the Complainant and its rights. In these circumstances, the registration and use of the disputed domain name – merely offering it for sale and considering the high price already indicated – amounts to bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
The majority of the Panel greatly respects the thoughtful work of our learned co-panelist, the Hon. Neil Brown Q.C., in providing his dissent. As set out above, however, the majority of the Panel disagrees with his interpretation of the evidence. The dissenting panelist does state:
“Suspicion is not evidence, and accepting a case based on such a suspicion is not complying with the UDRP, which has an express requirement that the constituent elements of the claim ‘must’ be proved and many subsequent provisions relating to ‘evidence’.”
The majority agrees that suspicion is not a sufficient basis to determine a complaint under the Policy. UDRP cases are to be decided upon the balances of probabilities. See WIPO Overview 3.0, section 4.2. On the objective evidence included in the record in this case, and the inferences arising from that evidence, the majority considers that standard has been satisfied in this case for the reasons set out above.
6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <arvesta.com> be transferred to the Complainant.
Rothnie, Warwick A.
Presiding Panelist
Flip Jan Claude Petillion
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: September 2, 2020
Dissenting opinion
General
There is an air of unreality about the Complainant’s claim in this case. The case presented by the Complainant , a Belgian company, is that it decided to change its name from Aveve to Arvesta, announcing in a press release on 21 September 20185 that its new name was based on three words that are clearly generic and descriptive and which were meant to be interpreted in that way : “harvest”, being the same word in English and the same word, “harvest”, in the Dutch version of the press release6and in the German version of the press release7, “arvus” the Latin word for plough and “invest” to connote “investing in people, brands, and innovation.” As part of that transition it registered Belgian and European Union trademarks for ARVESTA which are exhibited, although not translated into English. It also registered a series of domain names embodying the same word, “arvesta”, which resolve to the Complainant’s principal website. However, it could not register the domain name <arvesta.com> itself, as it was owned by another company. That company relinquished the domain name and it was put up for auction at a Namejet auction on 8 March 2020 when it was bought by the Respondent after a contest involving 48 other bidders. The complainant did not take part in the auction, or at least there is no evidence that it did, and there is no evidence of why, being obviously keen to own the domain name, it did not take part or place a backorder for the name if and when it came up for sale. But within two months, by 5 May, when the Complaint was filed, the Complainant had decided that it “therefore suspects” that the Respondent bought the domain name to sell it to the Complainant. The “therefore” in that sentence is that “the Respondent clearly knew that the Respondent (sic) had an interest in obtaining the disputed domain name”. Whatever that sentence means, it is clear that rather than accept the obvious and the only conclusion to which the facts lead, namely that it had missed out in an open contest to buy a domain name that it wanted, probably because it did not take part in the auction, it has jumped to the conclusion that it “suspects” the Respondent bought the domain name to sell it to the Complainant. Suspicion is not evidence, and accepting a case based on such a suspicion is not complying with the UDRP, which has an express requirement that the constituent elements of the claim “must” be proved and many subsequent provisions relating to “evidence”.
It is true, of course, that the Respondent made an assessment of the domain name he was bidding for, and this is set out in the majority decision. But there is no evidence that the Respondent knew of the Complainant and its Benelux and European trademarks and he expressly disavows this. There is no evidence that the Complainant had an international reputation, and the Complainant has not submitted that it had any international reputation such that the Respondent could be presumed to have heard of it. Had the Respondent conducted a search at the USPTO, he would have found that there had been two trademarks for ARVESTA, but both of them had been cancelled in 2010.8
There was not, therefore, in the opinion of this panelist, any evidence or any reason to justify a finding elevating the Complainant’s unsupported “suspicion” to the conclusion that it was “ highly likely” that the Complainant and its interest in the domain name “must have” been known to the Respondent.
Accordingly, what has happened in this case is simply that the Respondent bought an essentially generic domain name in open market by the well-established means of buying domain names and is now to be deprived of that property because a trademark owner who could have bought the domain name, but did not, demands it and advances no evidence and no reason why this should occur other than its suspicion. It will certainly make persons who want to buy domain names at an auction think twice before they do so, as suddenly there may appear after the purchase a company with no international presence demanding the domain name simply because it is the same name as its own trademark.
Right or legitimate interest
In the opinion of this panelist, there are two reasons why the Respondent has shown that it has a right or legitimate interest in the domain name. The first reason is that even if a prima facie case has been made out, the evidence is unequivocal in that the Respondent has rebutted that case.
The Complainant’s case that the Respondent has no right or legitimate interest in the domain name is remarkably brief. The following is its entire case and it adduced no other evidence in support of it:
“To the best of the Complainant’s knowledge, the Respondent has not been commonly known by the name ARVESTA. The domain name has no content (See Annex 5). The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or any domain names including the trademark ARVESTA. Consequently, the Respondent has no right or legitimate interest to use and register the domain names (sic) as the Complainant has prior and exclusive rights on the name ARVESTA.”
The Complainant adds that it “suspects” the Respondent acquired the domain name to sell it to the Complainant.
The case is therefore little more than an assertion and a conclusion with no evidence adduced in its support and no evidence from which it might be inferred that the acquisition of the domain name was tainted in any way or that the Respondent did anything improper.
In response, the Respondent has submitted evidence showing that he has a right or legitimate interest in the domain name. He has filed a Declaration which describes how he came to acquire the domain name and which is the only evidence on the purchase of the domain name or the reason why he bought it and a Declaration that the majority of the Panel say “must be accorded weight”. That Declaration can be compressed by stating that on 2 March 2020 the Respondent bought the domain name at an auction of expired domain names conducted by the firm Namejet. He competed against 48 other parties and was successful.
The Complainant did not seek to rebut that evidence and it did not request leave to file a supplementary statement as it could have done if the Complainant’s evidence were incorrect. As no challenge has been made to the veracity of the Complainant’s evidence and nothing appears to contradict it, the panel should accept it and act on it. Accordingly, the only evidence before the Panel of how the Respondent came to acquire the domain name is that he bought it on the open market, by an accepted and regular method of buying a domain name and that the sale took place under the auspices of a reputable and prominent domain name auction house that has been conducting such auctions since the year 2007.9
Those circumstances clearly give the Respondent a right to the domain name and a legitimate interest in it. As the Respondent acquired the domain name by a lawful means, that entitlement should be accepted.
The second reason why the Respondent has a right or legitimate interest in the domain name is that, as the Respondent submits, the domain name can fairly be described as consisting of a “generic” or “descriptive” word. The word obviously invokes the concept of “harvest” and would be read by most internet users as having that connotation, a concept that is consistent with the Respondent’s submission that the name could be seen as appealing to those who wanted the name for activities coming within that description and invoking the word “harvest”.
Moreover, the Complainant itself takes that view. It clearly intends that the word, as with its trademarks, should invoke the notion of a harvest of its products and be taken as the equivalent of “harvest” both in the English, Dutch and German versions of its website. We know this, because it says exactly that on its website, which is in evidence10. It states that in the year 2018 it started to use the word “arvesta” as “a new umbrella name Arvesta, experts in the field.” The Complainant is clearly invoking Arvesta as a generic word or as it calls it, an “umbrella“ word to cover products harvested from the field, with an accompanying photograph that reinforces the same point. Not only that, but when the new name was announced in 2018, ( and not in 2017, as is claimed in the Complaint) its press release of 21 September 201811 stated that it adopted the use of the word “harvest” for a particular reason, namely: ‘“harvest” because we continually reap the benefits of what we’ve sown.’ It also noted in the press release that “arvus” is the Latin word for plough and “invest” connotes “investing in people, brands, and innovation.”.
Accordingly, the domain name consisted of a generic or descriptive word and the Complainant has in effect asserted the same. This panelist therefore disagrees with the conclusion of the majority of the Panel that “Accordingly, the Panel does not find that “arvesta” is a common dictionary or descriptive term.”
It is now established that such a generic word gives rise to a right to register a domain name and a legitimate interest in a domain name provided that the owner does not trade on a corresponding trademark, “target” the trademark owner or engage in any other untoward conduct like promoting competing goods and services. The Respondent has cited numerous decisions to that effect which are regularly accepted and relied on by panelists in this field. There is simply no evidence of any such conduct by the Respondent that could fairly be described as targeting or similar. If it is said that the Respondent has not yet used the domain name in this manner, it should be appreciated that only two months had passed after the purchase until the Complainant filed its complaint and the Respondent, in fairness, must be accorded some time to develop his domain name as that is his business. Moreover, the plans the Respondent has revealed that he had for the domain name are clearly consistent with its being used for a descriptive purpose coming within the meaning of the domain name itself.
Not only is the foregoing the only evidence on this issue, but the reasons the Respondent gives for buying the name are themselves legitimate. He states in effect that the name presented itself as a valuable name that could interest a potential user, which must surely be the case, or as a name to sell, both of which are perfectly lawful and recognised aspects of domain name ownership, except of course if there is conduct in breach of the Policy, of which there is no evidence.
Three other factors should be mentioned. First, support for the Respondent’s contentions is to be found in the unchallenged evidence that he has registered a range of similar domain names of a generic and descriptive nature. Those identified in the evidence are
“Acasta.com; Adent.com; Akkan.com; AltaVilla.com; Amplica.com; Ancore.com; Aquaterra.com; Arcadius.com; Aresa.com; Avango.com; Averli.com; and Avrigus.com.” Those registrations support the contention that the Respondent’s interest and the nature of his business involved the acquisition of generic names for use rather than targeting a trademark owner.
If any prior decision is needed to support that position, the decision in Hotel Plaza Limited et al. v. Vertical Axis, Inc. et al.., D2008-1760 (WIPO March 18, 2009) is apposite. As the panel noted : “Upon reviewing the names of these other registrations, there is no evidence that the Respondent has engaged in a pattern of conduct or any other activity in which the objective was to benefit from the Complainant’s trademark. The wide nature of those other registrations seems to suggest that the Respondent has sought to benefit from the registration of a wide range of geographical and other generic terms without any clear evidence indicating that the Respondent had targeted the trademarks of others in this effort. In other words, there is no proof here of a pattern of cybersquatting conduct.”
Those remarks are equally applicable to the present case.
Secondly, there is nothing to suggest that the Respondent was likely to have known of the Complainant or its trademark and a lot to suggest that this was unlikely. The Complainant is a Belgian company whose website states that it only recently, in 2018, commenced activities outside Belgium and that it currently has a presence in the Netherlands, France and Germany, although it is not revealed how extensive this is. On the evidence, it has no presence in the rest of Europe, Asia, Africa, the United States, Canada or Australia. Its trademarks are solely Benelux and European. It has not registered or apparently applied for registration of a trademark in the United States. In the Complaint itself it says that its activities are “goods and services, such as cattle fodder, to the agricultural sector…(and) the largest chain of garden centres for individual in Belgium” suggesting that its activities are likely to be more prominent domestically than internationally. There is thus no evidence to suggest that the Respondent should or could have known of the Respondent or its trademark. This certainly reinforces the Respondent’s submission and the statement in his Declaration that he was not aware of the Complainant when he was bidding for the domain name and is supportive of his contention that he was motivated by the descriptive nature of the word and not the name or trademark of the Complainant.
Thirdly, the evidence is that a broker from Uniregistry made an unsolicited offer to the Respondent to buy the domain name and the Respondent replied that he would consider an offer of USD42,000. The majority say that it is “the amount” that underlines the finding that the Respondent “must have” known of the Complainant and its interest in the name Arvesta. That does not follow; the offer was made by the broker, not the Respondent, who had no contact with the Complainant. Moreover, it is well established that the price of a domain name is not a relevant test of whether the respondent has a right or legitimate interest in the domain name, as the value of a domain name depends on the unique circumstances of the buyer, seller and the domain name, where the market is the sole judge of prices. There are many decisions of panelists to this effect. See, for examples, Levine, Domain name Arbitration, Second edition, 2019 pp 340-344.
For all of these reasons, this panelist would find that the Respondent has established a right or legitimate interest in the domain name.
Bad Faith
The Complainant’s case on this issue is again very short and its entire case is as follows:
“The Complainant is owner of various domain names: ˥ arvesta.eu ˥ arvesta.be ˥ arvesta.nl ˥ arvesta.co.uk ˥ arvesta.de ˥ arvesta.lu ˥ arvesta.fr ˥ arvesta.org ˥ arvesta.company ˥ arvesta.global ˥ arvesta.group ˥ arvesta.community ˥ arvesta.info. The Respondent has chosen a domain name which is clearly of interest to the Respondent (sic) as it consists of its trademark and the commonly used extension .com. Given the large domain name portfolio containing the ARVESTA trademark of the Claimant, the Respondent clearly knew that the Respondent (sic) had an interest in obtaining the disputed domain name.
The Claimant therefore suspects that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name. in fact the domain name owner tried to sell the domain name to the Claimant for an amount of over 10.000 EUR.”
The respondent did not register or use the domain name in bad faith for the reasons already given.
Here again, the evidence to support the Complainant’s contentions is virtually non-existent. There is no evidence that the Respondent was minded to sell or rent the domain name to the Complainant and none from which that inference can be drawn. The sole direct evidence, made in a Declaration, is that he did not know of the Complainant at the time of the sale and there seems little reason why he would have known of it. The Complainant had little international presence and was of course not in the Respondent’s industry.
The only evidence is, first, that the website to which it resolved stated that the domain name was “available for sale”. That is a right that any owner of a domain name has and that right is widely recognised, as is the right to bargain for the best price no matter what it might be. The price is a matter for the market to determine. The evidence of the statement on the website is certainly not evidence from which an inference can be drawn that the Respondent acquired the domain name “primarily” to sell it to the Complainant or at all. Having acquired the domain name legitimately and on the open market, he was entitled to put it to any lawful use, including selling it. If it were said that being open to a sale were evidence of an offer to sell, which it is not, but also of an offer to sell specifically to a complainant, which it is not, that puts at risk the whole basis on which investors and others are able to buy domain names on the market and sell them if they wish. That clearly cannot have been the intention of the Policy, as can be seen by its plain words, and nor is it consistent with well established practice in the market.
Secondly, the limited evidence that there is, is evidence of an approach made to the Respondent to elicit interest in a sale of the domain name, not an approach made by him. The Respondent has explained that on March 13, 2020, five days after the auction, a Uniregistry broker contacted him to present an unsolicited offer to purchase the Disputed Domain. The Respondent was not aware that the Complainant was seeking to purchase the Disputed Domain and responded to the broker that he would consider an offer of $42,000 for the domain name, but that he was not planning on selling the domain name and desired to develop and possibly sell a future project using it. There was apparently no further contact. That perfunctory dealing was not an offer to sell or even an offer to treat with the Complainant because the Complainant was never mentioned. Nor was it an offer to sell to anyone. It clearly was a negotiating step and it was open to the Respondent to reject any offer until the deal was clinched.
It is therefore wrong to conclude from these facts that the Respondent must have intended at the time of the sale that he would buy the domain name, for the reason, and for the primary reason, to sell it to the Complainant.
It should also be remembered that the Complainant’s allegation is that it “suspects” it was the Respondent who tried to sell the domain name to the Claimant for more than “10 000 EUR” for which there is no evidence, either direct or by inference.
Conclusion
Finally, there really is no ground for concluding that “the conduct of the Respondent smacks of the same opportunistic behaviour which the Policy was adopted to prevent.” The nature of the Respondent’s business, on the only evidence on this subject, is that it is engaged in a lawful and legitimate business recognised as such by distinguished panelists and that buying the domain name was a legitimate part of that business. The alleged “opportunistic behaviour” of the Respondent was that it bought a domain name on the open market and is apparently now to be deprived of it at the suit of a party on no evidence whatsoever.
This panelist would therefore find that the Respondent has succeeded in showing that it has a right or legitimate interest in the domain name and that it did not register the domain name in bad faith.
The Hon Neil Brown Q.C.
Panelist (Dissenting)
Date: September 2, 2020
1WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.5.
2WIPO Overview 3.0, section 1.11.
3 https://assets.ctfassets.net/d8tpuxv6jaoz/1vnA0myuQA8g8wOc2yIoC8
/c3d486f671288d6f3ac73b25fb575f02/_PR_-_AVEVE_Group_now_known_as_Arvesta_-_EN.pdf.
4 The Response and attached declaration only mention the name Dennis Koorn as being the Respondent, but no further information is provided enabling the Panel to verify the Respondent’s identity.
5 The press release is in evidence as the series of domain names registered by the Complainant resolve to the Complainant’s website with its history of the Complainant and attachments including the press release; see file:///C:/Users/Admin/AppData/Local/Temp/_PR_-_AVEVE_Group_now_known_as_Arvesta_-_EN.pdf
6 file:///C:/Users/Admin/AppData/Local/Temp/PB-21092018-Groep_AVEVE_wordt_Arvesta-NL-sdl.pdf
7 file:///C:/Users/Admin/AppData/Local/Temp/PB-AVEVE-gruppe_Hei__t_Ab_Sofort_Arvesta_-_DU.pdf
8 http://tmsearch.uspto.gov/bin/showfield?f=toc&state=4810%3A37l79u.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=ARVESTA&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query&a_search=Submit+Query
9 http://www.namejet.com/Pages/press-releases/default.aspx
10 https://arvesta.eu/en
11 file:///C:/Users/Admin/AppData/Local/Temp/_PR_-
_AVEVE_Group_now_known_as_Arvesta_-_EN.pdf
