WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nature et Decouvertes v. XB NetVentures Inc.
Case No. D2007-1305
1. The Parties
The Complainant is Nature et Decouvertes, Toussus le Noble, of France, represented by Cabinet Regimbeau, of France.
The Respondent is XB NetVentures Inc., Phoenix, Arizona, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <nature-decouverte.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2007. On September 5, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On September 5, 2007, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2007. The Response was filed with the Center on October 4, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on October 16, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The following facts appear to be uncontested.
The Complainant is a company first registered in 1990, in France. The Complainant has 61 shops in France and 2 in Belgium. The Complainant’s stores specialize in the sale of products such as perfume, tea, cosmetics, aromatherapy-related products, astronomy products, seeds, garden equipment, seeds for birds, and other miscellaneous products. The Complainant’s products are marketed around the idea of nature, protection of the environment and earth, and life sciences.
The Complainant is the owner of trademarks registered in France, as well as an International mark, that include the terms NATURE ET DECOUVERTES and NATURE DECOUVERTES. The literal English translation of those terms is “nature” and “discovery”.
The Complainant is the registrant of a number of domain names that correspond to its registered marks, including <naturedecouvertes.com> and <natureetdecouvertes.fr>.
The disputed domain name was created on August 7, 2004. From evidence provided by the Complainant, it appears that the disputed domain name may have been first registered to David Roi, a resident of France. David Roi was an unsuccessful respondent in a different proceeding brought by the Complainant in relation to the domain name <nature-decouverte.net>, which is relevantly identical to the disputed domain name in this case. (See Nature et Decouvertes v. David Roi, WIPO Case No. D2007-0097). The Complainant provided evidence that the disputed domain name was then registered in its own name, at least on September 27, 2006. (The Complainant states that it received an explanation from Network Solutions that this may have arisen because of some error in the registration of the domain name following “the snap name’s proceedings”.) Subsequent to this, the registration of the disputed domain name was then transferred to the Respondent, at least by August 28, 2007.
At the date of this decision, the disputed domain name does not revert to an active website.
5. Parties’ Contentions
The following contentions are summarized from the Complaint.
The disputed domain name is identical or confusingly similar to the Complainant’s registered marks. The differences between the disputed domain name and the Complainant’s marks are minor and not sufficient to avoid the likelihood of confusion. The Complainant refers to previous cases for support, including Nature et Découvertes v. SARL Labenne Météorites, WIPO Case No. D2004-0364, in which the then Panel ordered the transfer to the Complainant of the domain name <natureetdecouverte.com>.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no permission from the Complainant to use its trademark, and the Respondent is not known by it. The Respondent does not use the disputed domain name in connection with a bona fide offering. The disputed domain name reverts to a ‘parking page’. (The Complainant provided evidence of a copy of that page, dated August 28, 2007. That page included, at the top, the statement “The Natural way to health from under 1 dollar”. It also provided a number of apparent links titled e.g. “Natural Therapies”, “Health Care” and “Body Care, Personal Hygiene”.) The disputed domain name incorporates French words, even though the Respondent is an American company. Those words do not legitimately appear on the Respondent’s website.
For similar reasons, the disputed domain name was registered and is being used in bad faith. The Complainant also contacted the Respondent by email, with various offers to purchase the disputed domain name. In the most recent of those, the Complainant offered USD $300 for it, to which the Respondent replied, on January 2, 2007, “Don’t waste my time with such ridiculous low offers.” The registration of domain names for the purpose of selling them is not fair business or fair use. This unfair behavior attests to the registration of the disputed domain name in bad faith.
The Respondent claims that the Complainant abandoned its rights in the disputed domain name. When the disputed domain name expired with its former registrant David Roi, the domain name was auctioned for sale, and the current Respondent was the successful bidder. The Complainant was aware of this and knew that others could bid on the disputed domain name at auction.
The Respondent registered the disputed domain name when it was deleted and became available for anyone to lawfully register. Registering a deleted or abandoned domain name weighs against a finding of bad faith (HP Hood LLC v. hood.com, NAF No. 313566; Vernons Pools Ltd. v. Vertical Axis, Inc., WIPO Case No. D2003-0043; Corbis Corporation v. Zest, NAF No. 98441). The Respondent has acted in good faith by participating in a public auction for the disputed domain name.
The Respondent did not register the disputed domain name because it incorporated a trademark (which follows from the fact that it had no knowledge of any trademark). In fact, the Respondent conducted a search of registered trademarks with the USPTO. The Respondent is a US company and was unaware of the Complainant’s French trademarks. Neither was the Respondent aware of the Complainant, its website or its business, and there is no evidence to the contrary. (The Respondent cites a number of cases in support of the principle that proof of bad faith requires that the Respondent had the Complainant’s trademark in mind.) It cannot be inferred that because a mark is well-known in one country, that it is well-known in another.
The Respondent’s process for selecting the domain name was done in a fairly automated manner. The Respondent snaps domain names that have a lot of links to them and not necessarily because of the words or phrases contained in the domain name. The Respondent then “either redevelop[s] the domains and the links help us [the Respondent] for SEO reasons, click traffic reasons, or [the Respondent]… redirect the domains to other websites [it] owns.” The Respondent notes that, as stated in the Complaint, only some of the links on the website (to which the disputed domain name was referred) related to the Complainant’s products.
The Respondent did not respond to the Complaint’s offers to purchase the disputed domain name because the Respondent was not interested in selling it.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant provides evidence of its registered rights in France for the marks NATURE DECOUVERTES and NATURE ET DECOUVERTES. In most cases, the Complainant’s mark consists of those terms together with a device depicting a turtle on a circle, which appears to represent the world. However, for the purpose of determining whether the disputed domain name is similar to one of the Complainant’s marks, it is the dominant textual elements of the mark which are relevant.
The disputed domain name differs from the Complainant’s mark for NATURE DECOUVERTES in only trivial respects. A relevantly identical domain name in the “.net” space was determined to be confusingly similar to the Complainant’s mark in Nature et Decouvertes v. David Roi, WIPO Case No. D2007-0097.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent appears to rest its rights or legitimate interests in the disputed domain name on the following grounds. In some cases, the Respondent makes these arguments in relation to the bad faith ground – however, the substance of the Respondent’s arguments appears relevant to this ground also.
Firstly, the Respondent claims that the Complainant ‘abandoned’ the disputed domain name, because it allowed it to be put up for auction. This argument appears factually flawed. The evidence, and even the fact that the Complaint itself was filed, does not demonstrate that the Complainant ‘abandoned’ the disputed domain name. Instead, it appears more probable that the Complainant simply did not have the same level of familiarity with the acquisition of domain names as the Respondent. The Complaint is not entirely clear about how the Complainant failed to obtain registration of the disputed domain name. However, the transfer, disposal or deletion of the disputed domain name was within the control of the original registrant – not the Complainant. In the event, it was the original registrant who abandoned the disputed domain name. The Respondent states that the Complainant ‘authorized’ the previous registrant to delete the disputed domain name and that this is equivalent to abandonment. But this is not what the case file suggests. Instead, it appears merely that the previous registrant said he would delete it, in response to the Complainant’s assertion of its rights against him. The Complainant then failed to secure the registration of the domain name and it was ‘snapped up’ by the Respondent. Despite this, the Complainant appears to have consistently asserted its rights to the disputed domain name.
Secondly, the Respondent argues that because the disputed domain name was deleted, “it became available for anyone to lawfully register”. To an extent, the Respondent makes this argument in support of its claim that the disputed domain name was abandoned – which the Panel does not accept for the reasons stated above.
To the extent that the Respondent’s argument might also suggest that the deletion of a domain name gives any subsequent registrant an automatic right to it, the Panel does not accept this also. This is essentially the same as a ‘first come, first serve’ argument, which it is the purpose of the Policy to prevent where the circumstances of paragraph 4(a) of the Policy are successfully made out. While the Respondent refers to a number of cases for support on this point, those cases do not establish the Respondent’s argument. For example, the Respondent cites the decision in Vernons Pools Ltd v. Vertical Axis, Inc., WIPO Case No. D2003-0041, for the statement that ‘after being deleted, “[the] name became available to whomsoever became lucky enough to buy it.” But that case involved then the complainant’s failure to renew its own registration. In any event, what the Respondent quotes from that case was a statement of fact by the Panel, rather than any statement of principle.
Paragraph 4(c) of the Policy sets out other illustrative evidence which a Respondent may provide to demonstrate that it has a right or legitimate interest in a domain name. The Respondent has shown none of these. Neither has the Respondent provided any other evidence that might support a finding of its rights or legitimate interests in the disputed domain name.
The Respondent’s business appears to consist of automatically registering parcels of domain names that have become available, and selecting those domain names which (in the Respondent’s words) “have a lot of links to them”. As the Respondent notes, it then uses those domain names e.g. to generate ‘click through’ revenue. Consistent with that purpose, for a period, the disputed domain name reverted to a website which provided links to other products. Under certain circumstances, similar websites for the purpose of generating ‘click through’ revenue have been found insufficient to demonstrate a right or legitimate interest in previous decisions under the Policy. (See, for example, Media General Communications, Inc. v. Rarenames, WebReg , WIPO Case No. D2006-0964.)
It might be argued that the Respondent has a right or legitimate interest in the disputed domain name because that domain name includes a combination of two generic terms. In this respect, the Complainant’s mark which is incorporated in the domain name is equivalent to the English terms “nature” and “discovery”. The registration of such a combination as a domain name might be legitimate, as long as the registration was for its attraction as a combination of dictionary words, rather than its attraction as a trademark. (For a recent statement to this effect, see e.g. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, and the cases cited in that one, which included the Media General Communications, Inc. case cited above.) But, for the reasons set out below in relation to bad faith, the Panel finds that the Respondent registered the domain name because of its attraction as a mark.
For all these reasons, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent denies any intent to capitalize on the Complainant’s trademark. Such an intent may be evidence of bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
The knowledge which the Respondent denies is any actual knowledge of the Complainant’s mark, business or website, when it registered the disputed domain name. Among other reasons, the Respondent points out that its registration of the disputed domain name was a fairly automated process; that it conducted a search of the USPTO for any mark associated with the domain name, and found none; that the Complainant has no mark registered in the United States nor any reputation in that jurisdiction where the Respondent is based; and that the Respondent is in the business of registering large numbers of domain names, among which the disputed domain name was just one.
A number of prior cases under the Policy have, however, made a finding of bad faith where a respondent ought to have known of the Complainant, and willfully avoided finding out. For example, as stated by the Panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304:
“respondents cannot…shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks…[Where] a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
(For similar statements, see also Media General Communications, Inc. v. Rarenames, WebReg , WIPO Case No. D2006-0964; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.)
There is no reason why this principle would not apply equally to a Respondent who bulk-registers domain names for any number of purposes - not just resale. This would include the purpose which the Respondent claims to have in this case. In other words, the concept of bad faith in paragraph 4(a)(iii) of the Policy, does not exclude a respondent who benefits from their own willful ignorance, in circumstances where the Respondent ought to have known of the Complainant’s trademark rights.
The issue then is whether the circumstances of this case suggest that the Respondent was willfully ignorant of the Complainant’s trademark rights. The Panel finds that such circumstances are present in this case. The Respondent is evidently a sophisticated user of the Internet and the domain name system. Even a simple Google search for the combination “Nature Decouvertes” shows all the top results reverting to websites that relate to the Complainant and its mark, as well as prior cases successfully brought by the Complainant under the Policy relating to its mark. Further, the combination of terms is obviously French. That combination is not, therefore, one that a person using it for a website in English (as the Respondent has done) would naturally choose. These circumstances make it difficult to find, as the Respondent requests, that it has taken a reasonable level of care in its selection of the disputed domain name, particularly where the Respondent has indicated that it conducted other basic searches, such as in the USPTO.
For these reasons, the Panel finds that the disputed domain name was registered and used in bad faith, for the purpose of paragraph 4(a)(iii) of the Policy.
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 <nature-decouverte.com> be transferred to the Complainant.
James A. Barker
Dated: October 30, 2007