Complainant is NUBE, S.L., Spain, represented by UBILIBET, Spain.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Weihao Pan, Pacha Incorporated, Taiwan Province of China, represented by Vukmir & Associates, Croatia.
The disputed domain name <pachagroup.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 8, 2021.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. On April 8, 2021, Respondent requested a four-day automatic extension, in accordance with paragraph 5(b) of the Rules, to submit a Response, which was granted by the Center. The Response was filed with the Center on April 16, 2021.
On April 22, 2021, Complainant submitted an unsolicited supplemental filing to the Center. On May 4, 2021, Respondent submitted to the Center an unsolicited reply to Complainant’s unsolicited supplemental filing. In its discretion, the Panel has decided to consider these unsolicited filings, because they clarified certain points relevant to the disposition of this case.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 3, 2021. 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.
Complainant is a subsidiary of Universo Pacha, S.A. (“UP”), and Complainant owns the intellectual property rights of the UP companies. According to the Complaint, UP is “a Spanish leisure, hospitality and entertainment group” founded in 1967. Complainant states that UP “is currently active in night clubs, hotels, restaurants, magazines, event organization, franchises, music production and clothing and accessories stores.” Complainant states further that UP “is an institution of Europe’s nightlife and dance scene, it has franchised the World over and its name is synonym of great music, fashion and gastronomy.” UP has clubs in Spain, Germany, Brazil, China, Australia, and Poland.
Complainant holds numerous registrations for the trademark PACHA in various jurisdictions, including Spanish Reg. No. M1200583 (registered June 5, 1989) and Unites States Patent and Trademark Office Reg. No. 1,926,157 (registered October 10, 1995).
Complainant asserts that the PACHA mark is “a famous mark,” and Complainant has annexed to the Complaint some evidence (in the form of Google search results and news articles) in support of this proposition.
The Domain Name was registered on August 29, 2011. The Domain Name does not appear to have ever resolved to an active website. Rather, according to Respondent, the Domain Name has been used exclusively to provide email addresses by which Respondent’s principals and employees may communicate with Respondent’s “business partners and suppliers.”
Respondent Pacha Incorporated is a holding company incorporated in the Virgin Islands, Overseas Territory of the United Kingdom (“Virgin Islands”), on November 5, 1998. Respondent’s business address is in Taipei, Taiwan Province of China. Respondent states that, as a holding company, it does not produce goods or services, but, instead, “holds equity in publicly listed companies.” Respondent states that it holds these shares through multiple brokerage firms, and Respondent has annexed to its Response a document showing its accounts with a variety of brokerage firms. This composite annex also includes a variety of emails between 2011 and 2021 sent from the brokerage firms to various principals or employees of Respondent, using the email addresses set up via the Domain Name (i.e., [name]@pachagroup.com).
According to Respondent, its main shareholder (“CP”) named Pacha Incorporated after the first initials of his family members Peter, Angela, Christina, Howard (PACH) plus “A” for “Associates.” Respondent states that it registered the Domain Name “as a combination of its company name and word “group” having in mind Respondent’s role as a holding company, which together with the companies in which it holds equity makes a group of companies.”
Respondent denies having any knowledge of Complainant’s PACHA trademark at the time it registered the Domain Name. According to Respondent, “Pacha” is a surname, and “pacha” is also a dictionary word in various cultures and languages. For example, “pacha” refers to “world” in Incan mythology, refers to a culinary dish in Persia, and refers to a military authority in Turkey. Respondent also provides a list of other companies who are using “Pacha” as a trademark or as a company name in various jurisdictions and in various spheres of economic activity.
Respondent also notes – and this was absent from the Complaint – that in 2014, Complainant’s counsel notified Respondent (through the Registrar) of Respondent’s alleged infringement of Complainant’s trademark, and Complainant’s counsel offered EUR 1,000 to purchase the Domain Name. Respondent promptly replied that it had no interest in selling its “corporate domain name.” Respondent did not make a counter-offer, and it does not appear from the record that the Parties had any further communications about the Domain Name after 2014.
Complainant contends that it has established all three elements required under the Policy for a transfer of each of the Domain Names.
Respondent asserts that it has a legitimate interest in the Domain Name and that it did not target Complainant’s trademark when registering the Domain Name. Respondent also argues that one need not establish a commercial website in order to have a legitimate interest in a domain name.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the trademark PACHA through registration demonstrated in the record.
The Panel also concludes that the Domain Name is confusingly similar to the PACHA mark. The Domain Name entirely incorporates the PACHA mark, and adds the descriptive word “group”. The mark is clearly recognizable within the Domain Name, notwithstanding this additional descriptive word.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Complainant has failed to prove that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has provided evidence that it has been a
Virgin Islands-registered company in good standing since 1998, and has provided an explanation why it adopted its corporate name and why it registered the Domain Name. The explanation itself is somewhat odd and is uncorroborated, but the Certificate of Incumbency annexed to the Response appears to the Panel to constitute sufficient proof of Respondent’s bona fides as a business.
Complainant challenges Respondent’s evidence on the basis that Respondent’s business address is in Taiwan Province of China, not the Virgin Islands. Respondent has responded, adequately in the Panel’s view, by noting that having a “mailbox” in the jurisdiction of one or more of its principals (including the manager of the firm) is not improper. Respondent has also pointed out that the personal names on its Virgin Islands Certificate of Incumbency also appear in emails between various financial institutions and individuals employed by or owners of Respondent.
In sum, the Panel is satisfied by the evidence presented in the record that Respondent is a legitimate holding company that has been legitimately using the Domain Name for its corporate email addresses. The Panel also agrees with Respondent that its lack of a trademark and its lack of an active commercial website is of no moment in the context of this dispute. As a firm whose only business activity is acquiring and holding shares of stock in other companies, for the benefit of its owners, Respondent has no need for a brand or a website.
Complainant has failed to establish Policy paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Complainant has failed to prove that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section.
Respondent denies having been aware of Complainant or its PACHA trademark at the time it registered the Domain Name back in 2011. The Panel sees no reason to doubt this denial. Although there is some evidence in the record that Complainant’s PACHA trademark enjoys some renown in certain jurisdictions and in connection with certain goods and services, the Panel cannot credit Complainant’s claim that PACHA is a famous mark such that a party denying knowledge of the mark runs the risk of being disbelieved. Further, as Respondent notes (and Complainant has not disputed), “Pacha” is a mark that has been used by several other companies as a company name and/or a trademark. In addition, “pacha” has a dictionary meaning in various languages or cultures.
In sum, Respondent’s denial of awareness of Complainant’s PACHA mark at the time it registered the Domain Name is not implausible. Absent proof that Respondent more likely than not had Complainant’s PACHA trademark in mind when registering the Domain Name, the Complaint cannot succeed.
Complainant has not established Policy paragraph 4(a)(iii).
Respondent has asserted, largely in passing, that Complainant’s filing and pursuit of this Complaint constitutes Reverse Domain Name Hijacking (“RDNH”). The Panel declines to make a finding of RDNH in this case. Even though Complainant’s case here is weak and not particularly well presented, it appears to the Panel that Complainant’s pursuit of this Complaint is largely the product of a misunderstanding of a basic fact, namely, that one need not be a business with a trademark in order to enjoy the legitimate possession of a domain name. Complainant holds trademark rights in numerous jurisdictions and has held those rights for many years, but Complainant fails to appreciate that its trademark is not fanciful and hence other parties may legitimately use that same word for myriad valid purposes. Such seems to be the case here. If Respondent had made it clearer, back in the 2014 correspondence between the Parties, precisely what its business was, it likely would have been clearer to Complainant at that time (or shortly thereafter, after investigation) that it had no real basis to try to wrest this Domain Name from Respondent. If that had occurred, the Panel would likely have concluded that Complainant should have known that this UDRP Complaint was doomed to fail, and hence an RDNH finding would have been appropriate. But that did not occur, and the Panel will chalk up this weak Complaint to Complainant overrating the actual (as opposed to constructive) reach of its trademark and to Complainant misunderstanding the elements required for a transfer under the UDRP.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: May 14, 2021
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