WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MASAI S.A. v. Peter Colman
Case No. D2007-0509
1. The Parties
The Complainant is MASAI S.A. of Luxembourg, Luxembourg, represented by Ernest Gutmann - Yves Plasseraud S.A., France.
The Respondent is Peter Colman of Maidstone, Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <henriot.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2007. On April 5, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 12, 2007, Melbourne IT trading as Internet Names Worldwide 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 19, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 9, 2007. Upon request by the Respondent and in the absence of any comments by the Complainant, this time limit was extended by the Center until May 18, 2007. The Response was filed with the Center on May 17, 2007.
The Center appointed Brigitte Joppich, William Lobelson and Charters Macdonald-Brown as panelists in this matter on July 5, 2007. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant in this administrative proceeding is MASAI S.A., a company having its registered seat in Luxembourg. The Complainant is the owner of numerous HENRIOT trademarks that are registered in many countries worldwide in international class 33 (mostly to designate Champagne wine), inter alia a French word mark HENRIOT (reg. no. 1362015) filed on July 13, 1966, an international registration HENRIOT (reg. no. 322994) filed on October 14, 1966, and a UK word mark HENRIOT (reg. no. 1120151) filed on September 5, 1979 (the “HENRIOT Marks”). The HENRIOT Marks are used through the Complainant’s exclusive licensee, Champagne Henriot, a French Champagne House founded in 1808.
The Respondent originally involved himself in domain names as a hobby, but since 2005 has made considerable efforts to develop many of his names. The disputed domain name <henriot.com> was first created on August 26, 1997.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is present in this case:
(i) The domain name is strictly identical to the Complainant’s HENRIOT Marks, and this finding is not affected by the specific top level domain name “.com”.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered the mark HENRIOT anywhere in the world; is not a licensee of the Complainant; and, is not otherwise authorized to use any of the Complainant’s HENRIOT Marks. In the view of the Complainant, there is no doubt that the Respondent knows the HENRIOT Marks and the goods in connection with which they are used by the Complainant through its exclusive licensee, given in particular that Champagne HENRIOT is widely sold and well-known in the United Kingdom, where the Respondent is domiciled. Finally, the Respondent does not use the domain name in connection with a bona fide offering of goods and services.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the website at <henriot.com> displays almost exclusively links directing to Champagne producers, most of them selling their products on the Internet. In addition, the Respondent has registered and is using the disputed domain name primarily for the purpose of attracting, for commercial gain, Internet users to a Sedo parking website by creating a likelihood of confusion with the Complainant’s mark. The Complainant finally contends that the Respondent chose to cybersquat the HENRIOT Marks because of their reputation in the Champagne industry. The Complainant also states that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and has shown a pattern of similar conduct because he has lost the domain names <laurentperrier.com> and <laurent-perrier.com> as well as domain names reflecting other well-known names and marks in earlier UDRP proceedings.
While the Respondent accepts that the HENRIOT Marks are identical to the disputed domain name, he argues that neither the second nor the third of the three elements specified in paragraph 4(a) of the Policy are present in this case:
The Respondent contends that he does have rights and legitimate interests in respect of
the domain name under paragraph 4(a)(ii) for three main reasons:
- While the Respondent does not enjoy any registered rights in the HENRIOT Marks, no proof has been offered regarding legitimate rights or interests in the name “Henriot”. Apart from two fixed links, the Respondent has no knowledge of what appears on the website under the disputed domain name in France or in any other country, as the algorithms of the system read the intellectual property of the user and are geo-variable and constantly changing. The listed variable links are only a secondary aspect to the website. They are provided through a Sedo parking page, which uses a system of optimizing algorithms largely based on keywords. The Respondent was not in control of the advertising content at the centre of this dispute and he could not know what advertisements were being shown on other geographical pages. The Complainant refers to Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241, where this type of system was dealt with at length with regard to the principles applying to Google Adsense. These principles must also govern the Sedo parking page advertisements in this case. The Respondent points out that there has never been an offer on the website under the disputed domain name or via links to sell the domain name to any third party. The Respondent is not responsible for the automatic assignment of the keyword “henriot” either, which has been changed by Sedo to “pottery” following the initiation of the current proceedings.
- The Respondent further contends that, at the date of the first registration of the domain name, he did not know the HENRIOT Marks and related goods. He states that “Champagne Henriot” is only one Champagne producer amongst thousands and that Henriot is a very common name both in France and around the world, appearing in various industries and therefore not exclusively associated with the Complainant.
- Finally, the Respondent states that under paragraph 4(c)(i) of the Policy a bona fide offering of services is sufficient and that he has indeed offered personal email services for the name “Henriot” as a primary function of the webpage under the fixed links that are not part of the Sedo algorithms. The Respondent contends that he has made substantial efforts to develop many of his domain names and has engaged the services of various independent companies to assist in these developments, thereby building a number of personal or vanity email sites, amongst them <henriot.com>.
The Respondent further contends that the domain name was neither registered nor used in bad faith under paragraph 4(a)(iii) of the Policy for the following reasons:
- The Complainant fails to show proof of any bad faith registration. The registration took place some ten years ago, well before the website under the domain name was built, and before “Parking” pages such as those of Sedo came into existence.
- The website at <henriot.com> has not been promoted on the Internet with the aim of attracting web traffic (site visitors). Sedo rules forbid the Respondent from sending re-direct traffic to the website. While the Complainant groups together the phrase “registration and use”, the Respondent contends they must necessarily be separate events both in time and in their nature. The cases cited by the Complainant must be distinguished from the present case. At no time has any Champagne related keyword such as “Champagne” itself ever been applied to the parking section of the domain name in question - only “henriot” and “pottery” have been used as keywords. Therefore, there has not been any deliberate use in bad faith by the Respondent of the Complainant’s marks.
- The domain name was not registered in order to prevent the Complainant from reflecting any mark in a corresponding domain name. The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent to disrupt the Complainant’s business. When the Complainant is attempting to group <henriot.com> with almost every domain name ever registered by the Respondent, it does not present any supporting concrete facts or circumstances directly concerning the registration of <henriot.com> and oversees that every case should be decided on its individual merits. Furthermore, the disputed domain name was not registered or acquired for the purpose of selling, renting, or otherwise transferring its registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The Respondent believes he is currently making a legitimate and fair use of the domain name, without intent to misleadingly divert consumers for commercial gain and is not acting in any way to tarnish any trademark or service mark at issue.
To the extent the Complainant has referred to a number of the Respondent’s domain names, suggesting they are imitating or reproducing third parties’ trademarks, the Respondent contends that all of these domain names are fundamentally geographic in nature. While some of the names describe towns or places which have football and other sports clubs, however, the Respondent contends that he is not aware of anything that precludes the legitimate use of these names for his vanity email business and notes the use of the suffix “FC” is being taken up by a number of subscribers for personal fan club email services.
Finally, relying on the doctrine of laches, the Respondent asks for a finding of reverse domain name hi-jacking in this case: The Complainant has had almost ten years since the Respondent’s first registration to dispute the rights or legitimate interests of the Respondent. If the Complainant believed any trade or service marks it owned were somehow being compromised or diluted it could have directly contacted the Respondent or his agent to complain about the Respondent’s ownership or use of the domain name. The failure to communicate until this action leads the Respondent to believe the Complainant instigated this Complaint in order to acquire the domain name in bad faith.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the HENRIOT Marks.
Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
The domain name is therefore identical to a trademark in which the Complainant has rights and the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel observes that the Respondent does not deny the Complainant’s assertions that it is not related to the Complainant and was not authorized by the Complainant to use the HENRIOT Marks. The Complainant’s assertions that the Respondent is not known under the name “Henriot” and does run any commercial business under said name are also accepted by the Respondent.
The Respondent suggests that the vanity email services offered on the website at the disputed domain name are in good faith and convey rights or legitimate interests under paragraph 4(c)(i) of the Policy on him. Although the Panel accepts that vanity email services may constitute a bona fide offering of services, it does not accept that the Respondent has any rights or legitimate interests in the domain name in the present case for the following reasons:
- The principles of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, are not met here as links lead to third parties’ products and the site is not only used to sell the trademarked goods. It is therefore irrelevant whether or not the vanity email services are to be considered as the primary use of the website.
- As decided in previous decisions under the Policy, offering a vanity email service can be a legitimate use (cf. e.g. International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210). However, in order to qualify as a legitimate interest, the domain name must be registered solely because it is a bona fide surname and only for use with vanity email services (cf. Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. 2006-0006). These requirements are not fulfilled here either.
- The name “Henriot” is not generic even if it is a common name. It may be a bona fide surname, but given the fact that it is not the Respondent’s surname and given the Respondent’s participation in the Sedo parking system, this is not enough to establish rights or legitimate interests.
- The Sedo system automatically uses words contained in the second level domain name as the first keyword. As a result, if the domain name infringes, Sedo parking can never constitute a legitimate use (and, vice versa, use by Sedo parking cannot confer legitimate rights on the user of an infringing domain name). The Respondent either knew the system or was under an obligation to familiarize himself with it. Therefore, he cannot claim to have no responsibility for the assignment of the keyword “henriot”. He selected and signed up to the Sedo system and he must be presumed to have familiarized himself with how the system worked. It is irrelevant that the Respondent had no knowledge of the exact content of the sponsored links that appeared on the website.
- To the extent that the Respondent cites Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241, and states that “not only was the Respondent not in control of the advertising content, but he also could not know what advertisements were being shown on other geographical pages”, this is, contrary to the Respondent’s belief, not comparable to this case: WIPO Case No. D2005-0241 must be distinguished from the present case because it dealt with a generic domain name (i.e. <elephant.com>), and the use of such domain name in good faith and mainly for advertising unrelated to the complainant’s business.
There is no other indication of any rights or legitimate interests of the Respondent in the disputed domain name. Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) and paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, it is the Panel’s opinion that the Respondent in all likelihood knew about the HENRIOT Marks when he registered the disputed domain name: The Complainant has provided evidence (including earlier UDRP cases) of a substantial number of domain names originally registered by the Respondent that are identical or confusingly similar to third parties’ trademarks. More specifically, it is of particular relevance that the Respondent registered <laurent-perrier.com>, a domain name containing another famous Champagne brand, on exactly the same day as the disputed domain name, i.e. on August 26, 1997 (cf. Laurent-Perrier S.A. et al. v. Peter Colman, WIPO Case No. D2000-0395). This indicates that the Respondent had Champagne brands in mind on the day when he registered the disputed domain name. It transpires from the information and documents supplied by the Parties that the Respondent is not involved at all in the business of Champagne wines. The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s HENRIOT Marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the HENRIOT Marks into the domain name and by using the website under such domain name as a parking website providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references). This is regardless of the fact that the Respondent had no knowledge of the exact content of the sponsored links that appeared on the website, it is sufficient in the Panel’s opinion that he chose the Sedo system which used “henriot” as the first keyword – just as the Respondent expected or should have known. Moreover, the use at the time the Complaint was filed is specially taken into account for the purposes of this decision. The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
In many common law jurisdictions, the doctrine of laches (undue delay in asserting a legal claim) is recognized but it is not an arbitrary or technical doctrine and its application will depend on the facts of each particular case. Laches essentially consists of the lapse of time coupled with the existence of circumstances which make it inequitable to enforce the claim.
The Panel wishes to point out that it appears that only about one year has passed since the Respondent first participated in Sedo’s parking system in April 2006 and a likelihood of confusion with the HENRIOT Marks and the Complainant’s activities first arose. However this may be, the Panel does not regard laches as an appropriate defense to the Complaint made in this case.
From a legal point of view, the Complainant is based in a civil law jurisdiction but, to the extent that laches is recognised under English law, it is an equitable doctrine and anyone seeking to rely on it would have to come to the tribunal “with clean hands”. As the Respondent has acted in bad faith, it is self evident that such a remedy is not available in this case. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid confusion in the future as to the source of communications, goods, or services; as previous Panels have found: the Policy does not contemplate a defense of laches, which some panels have found to be inimical to the Policy’s purposes (cf. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; FabJob Inc. v. Compana LLC, WIPO Case No. D2006-0610).
The Panel therefore concludes that the defense of laches does not apply to this Policy proceeding and will not withhold a Policy decision in favor of the Complainant on the ground that the Complainant failed to seek transfer of the domain name more promptly.
8. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This 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.” Moreover, paragraph 15(e) of the Rules provides as follows: “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.”
In the present case, where the Complainant owns a great number of registered marks, identical with the second level domain name, and has adequately presented a case that meets the standard for relief under this proceeding, there is no room for a reverse domain name hijacking order.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <henriot.com> be transferred to the Complainant.
Dated: July 19, 2007