WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ancien Restaurant Chartier v. Tucows.com Co
Case No. D2008-0272
1. The Parties
The Complainant is Ancien Restaurant Chartier, Paris, France, represented by Tmark Conseils, France.
The Respondent is Tucows.com Co, Toronto, Canada, represented by Cathcart, Collins, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <chartier.com> (the “Domain Name”) is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2008. On February 25, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name. On February 25, 2008, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the Domain Name. 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 February 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2008. The Response was filed with the Center on March 20, 2008.
The Center appointed Warwick Smith, Isabelle Leroux and David E. Sorkin as panelists in this matter, on April 22, 2008. 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
The follow uncontested facts are taken from the Complaint.
The Complainant’s corporate name is Ancien Restaurant Chartier. It was registered as a corporation on August 6, 1954.
The Complainant is the proprietor of a well-known restaurant in Paris. The restaurant was established in 1896, and it was originally known as the Bouillon Chartier. It is now known as the Restaurant Chartier. It specializes in serving traditional French fare at reasonable prices. The restaurant is situated in a building which was given a historic building classification in 1989.
According to the Complaint, the Complainant’s Paris restaurant is well-known in France and to tourists all over the world. Its sales turnover in 2006 was more than €5.8 million.
The Complainant is the registered proprietor of French and international trade mark registrations of the mark CHARTIER. The French trade mark registration has been in effect since December 13, 1995, and the specifications (in international classes 29, 30, and 43) cover various food products, plus “services of restaurants and bars, hotel services”. The Complainant’s international registration of CHARTIER has been in effect, for the same goods and services and in the same international classes, since May 1996.
The Domain Name was originally registered on May 30, 1996. The original registrant was Mailbank.com Inc., which traded as “NetIdentity”. (The Panel will refer to Mailbank.com Inc hereafter as “NetIdentity”).
The Domain Name resolves to a landing page, containing a search engine with sponsored links to third party websites. The Complainant notes that the sponsored links at the web page to which the Domain Name resolves, appear to be links concerned with topics such as travel, finance, chat, or insurance, with none being a link relating specifically to the Respondent’s internet activities.
The following facts are taken from the Response.
On June 19, 2006, the Respondent’s parent company, Tucows Inc., completed the acquisition of NetIdentity. One of the substantial attractions of NetIdentity for Tucows, was that NetIdentity held one of the Internet’s largest collections of domain names consisting of common surnames. According to the Response, NetIdentity had, over the preceding decade, acquired thousands of surname domain names such as “Smith.net”, or “Schafer.org”, and it used those names to sell email and other Internet services to the public. For example, numerous individuals with the surname “Smith” could obtain personalized email addresses through the NetIdentity system, such as “Bill@smith.net”, or “Sue@smith.net”. According to a declaration which was provided by the Respondent’s chief executive officer, Mr. Sweetman, the NetIdentity collection of domain names covers over 70% of surnames in the United States of America. In a podcast published on the website at “www.tucows.com” on November 15, 2006, the Tucows chief executive commented that the NetIdentity collection of surname domain names his company was acquiring, represented “a very large number of popular surnames throughout North America, Europe, and frankly around the world”.
The concept of shared domain names was and continues to be a very important part of NetIdentity’s business culture.
In addition to obtaining personalized email addresses, some NetIdentity customers also purchase website hosting services. Such customers are able to have websites at addresses such as “www.bill.smith.net”, or “www.sue.smith.net”.
No single customer has the website at “www.[domain name].com/org/net”. The “www.[domain name]” web pages contain only the NetIdentity branding, and a registration link at the top of the page. Internet users can use the registration link to acquire their own personalized email address, or other services such as web hosting. If the relevant domain name were “smith.net”, an Internet user typing in “www.smith.net” would be taken to a landing page containing the NetIdentity branding on the left, and the click-on link “get your own Smith.net email address” to the right. Clicking on that link would take the Internet user to NetIdentity’s registration page. In addition to the NetIdentity branding and the link to the registration page, the Respondent acknowledges that the pages to which its surname domain names resolve all contain sponsored links to third party websites served by NetIdentity’s business partner, Oversee.net. The Oversee.net search engine results and link pages provide advertising revenue for NetIdentity and the Respondent.
The Respondent’s chief executive officer states that, according to United States census data, over 5,000 people in the United States of America have the last name of Chartier. The Respondent has produced an extract from a website at “www.restaurant-chartier.com”, which appears to be a website operated by the Complainant. The extract from this website refers to the founder of the Complainant’s restaurant, as one Camille Chartier. The Respondent has also produced Whois particulars showing that the domain name <chartier.fr> is owned by an individual, Jean-Claude Chartier. That individual appears to have no connection with the Complainant.
Pre-commencement Correspondence between the Parties
The Complainant sent a cease and desist letter to the Respondent in October 2007. The Complainant has not produced a copy of that letter, but it appears to have been sent to the Respondent on October 8, 2007. The Complainant did produce a copy of the Respondent’s reply, dated October 19, 2007.
In the Respondent’s October 19, 2007 letter, the Respondent advised that Tucows Inc. is a publicly traded company which, in June 2006, acquired NetIdentity and its extensive portfolio of domain names. The Respondent explained that “the NetIdentity concept is to allow multiple users to share domain names that correspond either with their personal names or their personal interests”. The Respondent went on to state that “Chartier” is a common surname, and that the Domain Name is part of the NetIdentity portfolio.
In the October 19, 2007 letter, the Respondent denied any infringement of the Complainant’s trade mark registrations, and said that it saw no valid reason to give up ownership of the Domain Name. However, it did offer to negotiate a yearly lease of the “www” subdomain, which would give the Complainant the use of the URL “www.chartier.com” and a set of chartier.com email addresses.
In his declaration attached to the Response, Mr. Sweetman declared that, to the best of his knowledge, neither the Respondent nor its predecessor in interest had any knowledge of the Complainant or its trade mark prior to the Complainant’s first contact with the Respondent in 2007.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical to the Complainant’s CHARTIER mark, and is very similar to the Complainant’s corporate name.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent does not own any CHARTIER trade mark, and the Respondent’s corporate name is totally different from the word “Chartier”.
(ii) The Respondent has never been commonly known by the Domain Name.
(iii) A search on the website at “www.tucows.com”, owned by the Respondent’s parent company, reveals no reference to the word “Chartier”.
3. The Domain Name was registered and is being used in bad faith:
(i) The Domain Name creates a likelihood of confusion with the Complainant’s CHARTIER mark and its corporate name Ancien Restaurant Chartier.
(ii) At the date of the registration of the Domain Name (May 30, 1996) the Respondent could not have been unaware of the existence of the Restaurant Chartier and (consequently) the Complainant’s rights in its trade marks and corporate name.
(iii) The Respondent is using the Domain Name simply to derive revenue through sponsored advertising links, while it waits until it sells or leases the Domain Name. The Respondent’s intention to sell or lease the Domain Name to the Complainant is evidenced by the proposal in the Respondent’s letter dated October 19, 2007, to offer the Complainant a yearly lease of the Domain Name. That proposal proves that the Respondent acquired the Domain Name for the purpose of selling, renting, or otherwise transferring it to the Complainant.
The Respondent contends:
1. The Domain Name was acquired by NetIdentity almost 12 years ago, on May 30, 1996. The Domain Name was registered because it corresponded with a common surname.
2. A trade mark registration for the mark CHARTIER does not provide exclusive rights to the use of that word. The Complainant’s rights are necessarily limited to the products and services for which the mark has been registered. The Respondent does not use the word “Chartier” in any way to designate the source or origin of food products. Rather, the Respondent has used the Domain Name for surname-based email, a use that is legitimate and non-infringing.
3. While “Chartier” may sometimes be used in commerce as a trade mark, it is first and foremost a surname. NetIdentity’s business (both before and after the acquisition by Tucows), has been the provisioning of surnames as domain names for shared use by end-users. The Domain Name is one such domain name, and such a use is a legitimate non-infringing use of the name (citing the decision of the United States Court of Appeals for the Ninth Circuit, in Avery Dennison Corp v Sumpton, 189F. 3d 868 (9th Cir. 1999)). The Respondent in the Avery Dennis Corp case, Mr. Sumpton, was the founder of NetIdentity, and the “vanity email” business discussed in that case is the very same business which is in issue in this proceeding. The Court of Appeals in Avery Dennison Corp v. Sumpton held that NetIdentity’s surname domain name business involved the use of words, some of which happened to be trade marks, for their non-trade mark value. Numerous previous decisions under the Policy involving NetIdentity itself, have addressed similar facts and allegations as those at issue in this proceeding. See, e.g. International Raelian Religion and Raelian Religion of France b Mailbank.com Inc., WIPO Case No. D2000-1210; Buhl Optical Co v. Mailbank.com, Inc., WIPO Case No. D2000-1277; Bosco Products, Inc. v. Bosco E-Mail Service and Mailbank.com¸ NAF Case No. FA94828; José de Jesús Velázquez Jiménez v Mailbank.com Inc., WIPO Case No. D2001-0341; Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205; Dong A/S v. NetIdentity, NAF Case No. FA250240; Walls Industries, Inc. v. Tucows.com Co., NAF Case No. FA824361; Ken Batchelor Cadillac Company, Inc. v. Tucows.com Co., NAF Case No. FA1126742. In each of these decisions, the panel has found that NetIdentity has a valid, non-infringing use of the surname at issue.
4. The cases referred to above also support the proposition that the Respondent has not registered or used the Domain Name in bad faith.
5. None of the examples of bad faith registration and use which are provided at paragraph 4(b) of the Policy are present in this case. The Complainant’s bad faith allegations are supported only by conclusory allegations. The entirety of the argument is that the Respondent registered a name in 1996 in order to sell it, at some distant future time, to the Complainant, a company with which it never initiated contact. That proposition is simply not credible, and Mr. Sweetman’s declaration makes it clear that the real purpose of registering the Domain Name was to add it to the NetIdentity portfolio of surname domain names. The Domain Name was not acquired for any association it might have had with the Complainant’s trade marks.
6. The Respondent only learned of the existence of the Complainant in October 2007, when it received the cease and desist letter. The Respondent then offered to lease the Domain Name to the Complainant, on the same terms that anyone could have rented or leased a NetIdentity surname.
7. The Panel should find that the Complainant has been guilty of reverse domain name hijacking, for the following reasons:
(i) The surname business of NetIdentity and Tucows was evident from the face of the NetIdentity website, and the propriety of the business operated by NetIdentity and Tucows is clear from the established case law and substantial precedent under the Policy.
(ii) To prevail in an allegation under paragraph 15(e) of the Rules (the Rule applicable to reverse domain name hijacking), a respondent must show that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name, or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith (citing Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. There is an objective test for bad faith on the part of a complainant, and the concept encompasses both malicious intent and reckless or knowing disregard of the likelihood of the respondent possessing a legitimate interest in the disputed domain name (citing Smart Design LLC v. Hughes, WIPO Case No. D2000-0993, and Goldline International Inc. v. Gold Line (supra).
(iii) In this case, the Complainant has offered only conclusory statements, when even a modest investigation of the facts and the rules governing the Policy would have revealed the proceeding as meritless. The Complainant knew that some of its claims in this proceeding were false, at the time they were made – the person signing the Complaint could not have believed that the Respondent, having registered a Domain Name in 1996, quietly held it for 12 years, all in an attempt to sell it, 12 years later, to an obscure restaurant in a foreign country.
(iv) No reasonable person could draw the conclusions the Complainant seeks to draw from the facts. That sort of unreasonable overreaching is precisely what paragraph 15(e) of the Rules is aimed at.
6. Discussion and Findings
A. What the Complainant must Prove
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainant succeeds on this part of the Complaint.
The Complainant has proved that it is the registered proprietor of the mark CHARTIER, both in France and internationally under the Madrid system of international trade mark registration. The Domain Name is identical to the Complainant’s CHARTIER mark. (Numerous panels deciding cases under the Policy have held that suffixes such as “.com” are not to be taken into account in the comparison which is required by paragraph 4(a)(i) of the Policy.)
C. Rights or Legitimate Interests
In the view of the case to which the Panel has come on the bad faith registration and use issue (Paragraph 4(a)(iii) of the Policy), it is not necessary for the Panel to make any findings under this heading.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(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 trade mark 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 trade mark 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 [the respondent’s] 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 [the respondent’s] website or location.
None of those circumstances are present on the available record in this case, and the Complainant has not provided evidence of any other circumstances which would justify a finding of bad faith registration and use. The Complainant has therefore failed to prove this part of the Complaint. The Panel has come to that view for the following reasons:
1. It appears that “Chartier” is a relatively common French surname. The Complainant’s restaurant itself was founded by a person with the surname Chartier, and the domain name <chartier.fr> is owned by another individual named Chartier. In addition, the Respondent’s evidence is that, even in the United States of America, recent census figures have indicated that there are 5,000 people with the name “Chartier”.
2. The Respondent has explained that the Domain Name was acquired, because of its attraction as a surname, for use in the NetIdentity business of providing personalized email and web hosting services which permit individuals to have email addresses and websites which incorporate their own names. The Respondent’s chief executive officer has provided a declaration to that effect, and there is nothing in the evidence which would suggest that the Domain Name was acquired by the Respondent for any other purpose. Previous panels have found that the relevant time for assessing respondent intent vis a vis registration under the Policy when purchasing an existing domain name portfolio, is the time at which the portfolio (of which the disputed domain name forms part) was acquired (see for example, Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438)
3. It is in general essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted the Complainant or its trade mark, or at least had the Complainant in mind, when it registered the disputed domain name (see for example Builder’s Best Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748, Emilio Pucci SRL v. Mailbank.com Inc., WIPO Case No. D2000-1786, the Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008, and numerous other UDRP decisions to similar effect). Some panels have also noted that those who register domain names, and particularly those who register domain names in large numbers, should not simply turn a blind eye to the possibility that the names they are registering will infringe or violate the trademark rights of others (see for example Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448).
4. The position in this case however is similar to that with which the Panel was concerned in one of the cases referred to by the Respondent, Puls Elektronische Stromversorgungen GmbH v. NetIdentiy, WIPO Case No. D2002-0205. The three-member panel in that case was concerned with the application of the Policy to the very same business model with which we are concerned in this case (indeed, the respondent in the Puls Elektronische case was the predecessor of the Respondent in this case). The panel in the Puls Elektronische case was unable to come to a common view on the “rights or legitimate interests” issue, but was unanimous in finding that the Complainant had failed to prove bad faith registration and use. The panel in Puls Elektronische said:
“While the list of examples of bad faith in paragraph 4(b) is expressed to be non-exhaustive, the Panel regards it as crucial to the success of a Complaint under the Policy that at the time of registration the Respondent at the very least had the Complainant in mind.
Here there is no evidence that the Respondent had the Complainant in mind when registering the Domain Name. The Complainant has produced no evidence to show why the Respondent might have been expected to know of the Complainant or its trade mark and the Respondent has expressly disclaimed any such knowledge. ‘Puls’ was just one of many thousands of surnames registered as domain names by the Respondent. The Respondent’s purpose was simply to target as customers people having the surname PULS”.
5. In this case, the Respondent has provided a declaration from its chief executive officer, Mr. Sweetman, declaring that, to the best of his knowledge, neither the Respondent nor its predecessor in interest had any knowledge of the Complainant or its trade mark, prior to the receipt of the cease and desist letter in October 007. In the Panel’s view, that statement is entirely plausible. The whole nature of the NetIdentity surname domain name business involved focus not on individual trade marks, but on very common surnames. Further, the Respondent and its predecessor appear to be (or have been) domiciled in Canada and the United States of America respectively, and the Complainant’s restaurant is in France. There is simply no basis in the evidence for the Panel to reject the Respondent’s not implausible assertion that it did not “have the Complainant in mind” when it registered the Domain Name.
6. The foregoing findings are sufficient for the Panel to conclude that the Complainant’s bad faith arguments must fail. However it is appropriate that the Panel should address the Complainant’s specific contentions, especially as the Respondent has alleged that the Complaint has been brought in bad faith. Addressing the Complainant’s contentions, the Panel notes first that the Complainant appears to be arguing that, because the Respondent offered in the October 19, 2007 letter to negotiate a yearly lease of the Domain Name to the Respondent, the circumstances somehow fall within paragraph 4(b)(i) of the Policy (Respondent registering or acquiring a disputed domain name with the intention of selling or renting it to the Complainant, or to a competitor of the Complainant, at a profit). But in the years since 1996 neither the Respondent nor its predecessor in interest ever approached the Complainant to attempt to sell or lease the Domain Name to the Complainant – the Respondent’s October 2007 offer was only made in response to the Complainant’s cease and desist letter, and it does not appear to have offered more than the Respondent would have offered any potential customer in the ordinary course of the Respondent’s business. Further, there is no evidence at all that, when it registered or acquired the Domain Name, the Respondent had the primary purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant. On the contrary, the evidence suggests that, when it registered the Domain Name, the Respondent would have had in mind the thousands of individuals who go by the family name “Chartier” – not the prospect of selling or leasing the Domain Name to one particular business which happens to operate under a CHARTIER trade mark. The same argument was put and rejected by the Panel in the Puls Elektronische case, where the Panel said:
“The Panel rejects the argument of the Complainant to the effect that the offer of the Domain Name for sale or rent to third parties is contrary to paragraph 4(b)(i) of the Policy. In putting that argument forward, the Complainant has ignored the words “to the Complainant or a competitor of the Complainant”, which appear in that paragraph. Were the Complainant’s argument to prevail, domain name dealing would be contrary to the Policy whenever the name in question is the subject of trade mark rights somewhere in the world. That has never been the objective of the Policy. Still less is it what the Policy says.”
7. Secondly, the Complainant refers to the sponsored links at the Domain Name, which are concerned with topics such as travel, finance, or insurance, which have nothing to do with the Respondent’s internet activities. The Complainant states in the Complaint that “the search engine with sponsored links is a way for the Respondent to wait for the selling or the lease of the domain name”. The Complainant appears to be suggesting that the use of a disputed domain name for the provision of sponsored links to unrelated third party websites (while the registrant waits to effect a sale or lease of the disputed domain name), is somehow indicative of bad faith on the part of the registrant. But numerous UDRP panels have held that it is not bad faith to resell domain names that incorporate dictionary words or common descriptive expressions provided that the domain name has not been chosen because of its correspondence to a complainant’s trade mark (see for example Media General Communications Inc. v. RareNames WebReg, WIPO Case No. D2006-0964, where the panel noted:
“In the absence of evidence suggesting name selection because of correspondence to a trade mark, domain resale and the use of a domain name to publish advertising links are normally legitimate business enterprises.”)
The panel in Media General Communications Inc. noted that the acquisition of domain names for resale, and the posting of sponsored advertising links pending resale, may be regarded as legitimate in certain circumstances, including:
(i) Where the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links;
(ii) The domain name in question is a “dictionary word” or a generic or descriptive phrase;
(iii) There is no evidence that the respondent had actual knowledge of the Complainant’s mark
(iv) Where the respondent has made good faith efforts to avoid registering domain names that are identical or confusingly similar to marks held by others.
In this case, the Respondent is in the business of acquiring large numbers of domain names, and the Panel accepts the Respondent’s evidence that it had no actual knowledge of the Complainant’s mark. Items (i) and (iii) above therefore apply in this case. While the panel in Media General Communications, Inc. referred to “dictionary words”, or generic or descriptive phrases, the Panel cannot see why the same result should not follow where a respondent is in the business of registering large numbers of common surnames. The significance of the “dictionary-word-or-not” distinction, appears to lie either in the inherent unlikelihood of anyone having monopoly rights in such a word or expression, or the “unreasonableness” of expecting a prospective domain name registrant to conduct a search on a common word or descriptive expression before registering it as a domain name. Those considerations seem to the Panel to be equally applicable to a word such as “Smith” as they are to an ordinary descriptive word or phrase. As for the fourth Media General Communications Inc. factor listed above, there is no evidence of good faith efforts made by NetIdentity or the Respondent to avoid registering domain names that were identical or confusingly similar to marks owned by others, but the Panel does not regard that as significant in this case, where the Domain Name was (for the purposes of the Policy) the equivalent of a common word or descriptive expression, and there is no evidence that NetIdentity or the Respondent “had the Complainant in mind” when the Domain Name was registered, in the sense discussed in the Puls Elektronische case.
8. Even with bulk registrations or acquisitions of domain names by professional domainers, the critical consideration seems to be whether or not it can be said that the disputed domain name has been acquired because of its generic value, or because it is identical or confusingly similar to a third party’s trade mark. In mVisible Technologies Inc. v. Navigation Catalyst Systems Inc., WIPO Case No. D2007-1141, the three-member panel discussed the respondent’s use of landing pages (similar to the kind used by the Respondent in this case), and said:
“If the links on a given landing page are truly based on the generic value of the domain name, such use may be bona fide because there are no trade mark rights implicated by the landing page. See e.g. Land Mark Group v. Digi Media.com, NAF 285459 (PPC [ie “Pay Per Click:”] landing pages are legitimate if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trade marks; see also National Trust for Historic Preservation v. Barry Preston, WIPO Case No. 2005-0424. If though, the links are based on the trade mark value of the Domain Names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See e.g. Champagne Lanson v. Development Services/Mail Planet.com Inc., WIPO Case D2006-0006 (PPC landing page not legitimate where ads are keyed to the trade mark value of the domain name); The Knot Inc. v. In Not We Trust Limited, WIPO Case No. 2006-0340 (same); Brink’s Network v. Asproductions, WIPO Case No. D2007-0353 (same).)”
In this case, the parties are domiciled in France and Canada respectively, and the Panel does not think it necessary or appropriate to rely upon any propositions of law articulated by the United States Federal Court of Appeals in the Avery Dennison Corp v. Sumpton case (supra). However the Panel has found helpful the following description of the NetIdentity business model which the Court of Appeals provided in that case:
“All evidence in the record indicates that Appellants [i.e. the Respondent’s predecessor in interest in this case] register common surnames in domain-name combinations and license email addresses, using those surnames, with the consequent intent to capitalize on the surname status of “Avery” and “Dennison”. Appellants do not use trade marks qua trade marks as required by the case law to establish commercial use. Rather, Appellants use words that happen to be trade marks for their non-trade mark value”.
So in this case, the Panel accepts that the Respondent does not use the surnames it acquires because of their value as trade marks. As the Court of Appeals aptly put in it in Avery Dennison Corp v. Sumpton, the Respondent “uses words that happen to be trade marks for their non-trade mark value”. In the circumstances of this case, such a use is not a bad faith use of the Domain Name.
E. Reverse Domain Name Hijacking Allegation
If a panel finds that a complaint has been brought in bad faith (for example, in an attempt at reverse domain name hijacking, or with the primary purpose of harassing the domain name holder), the Panel is obliged to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding (Rules, paragraph 15(e)).
“Reverse domain name hijacking”, means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name (Rules, paragraph 1).
The Panel accepts the Respondent’s submissions on the test for reverse domain name hijacking, as articulated in cases such as Goldline International Inc. v. Gold Line (supra) and Smart Design LLC v. Hughes (supra) – for a finding of bad faith use of the Policy, a respondent must generally show that the complainant knew of respondent’s unassailable right or legitimate interest in the disputed domain name, or the clear lack of bad faith registration, but nevertheless proceeded with the complaint. Each case will be different, but there will generally either be evidence of malicious intent on the part of the complainant, or (at least) a reckless or knowing disregard of the likelihood that the respondent might possess a legitimate interest in the disputed domain name.
In this case, the Panel is of the view that, although the Complaint has failed, a finding of reverse domain name hijacking, or other bad faith use of the Policy, would not be appropriate.
First, the Complainant has proved that it is the registered proprietor of a trade mark which is identical to the Domain Name. That trade mark does not consist of some common descriptive word or expression (although it appears to be a common French surname). The Complainant also operates a business under the CHARTIER trade mark, which appears to have been an institution in Paris for over 100 years. The Panel accepts that the Restaurant Chartier would be known to a very significant proportion of the French population, and also to a significant number of overseas tourists who have visited Paris.
In addition, there is now a line of Panel decisions under the Policy, which suggest that professional domainers who acquire domain names in very large numbers, have some good faith duty of inquiry before registering new domain names, to ensure the registration and subsequent use of the new name will not infringe a third party’s rights. While that line of authority has not been embraced by all UDRP panels, and the Panel does not regard it as applicable on the rather particular facts of this case in any event, the Panel would not have regarded it as beyond the bounds of good faith argument if the Complainant had advanced argument based on those prior panel decisions.
There is no suggestion of malicious intent on the part of the Complainant, and it could hardly be thought that the Complaint has been brought in an attempt to “harass” the Respondent, which is part of a vastly experienced corporate provider of Internet services. Nor is this one of those cases where a completely meritless complaint has been advanced in the hope that the respondent would not bother to respond – the Respondent’s October 19, 2007 letter would have put the Complainant on notice that any complaint filed would very likely be defended.
Having regard to the foregoing considerations, the Panel concludes that the reverse domain name hijacking allegation must be rejected. There is no evidence of malice or intended harassment, and the Complaint was not so obviously hopeless at the outset that the Panel should conclude that it was brought in bad faith.
For all the foregoing reasons, the Complaint is denied. The Respondent has not established that the Complainant has been guilty of reverse domain name hijacking, or that the Complaint was otherwise brought in bad faith.
David E. Sorkin
Dated: May 6, 2008