WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Henkel KGaA v. Mr. Augustin Sbinta
Case No. DRO2008-0003
1. The Parties
1.1 The Complainant is Henkel KGaA, of Düsseldorf, Germany, represented by Vilau & Mitel SCA, of Bucharest, Romania.
1.2 The Respondent is Mr. Augustin Sbinta, of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <moment.ro> (the “Domain Name”) is registered with National Institute of R&D on Informatics (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On February 1, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. That verification response also identified the language of the relevant registration agreement to be Romanian.
3.2 The Complaint was submitted in English. Under paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. Given that the Registrar had identified the language of the relevant registration agreement to be Romanian, on February 18, 2008 the Center asked the Complainant to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. In the absence of such an agreement, the Complainant was asked to formally request that English be the language of the administrative proceedings.
3.3 On February 21, 2008, the Complainant requested that English be the official language of the administrative proceedings on the grounds that all correspondence with the Center had been in English and the Respondent had already used this language in correspondence with the Center.
3.4 On February 22, 2008, the Respondent objected to the Complainant’s request on the basis that the Respondent himself is a Romanian citizen, the registration of the disputed domain name was made in the Romanian language and correspondence between the parties prior to proceedings being commenced was conducted in Romanian. The Respondent further claimed:
“My native language is Romanian language and translation of the case in English means:
- incapacity to use all my arguments to defend my legal and civil rights
- I will involve in this case third parties like witnesses and public organizations to defend Romanian language and in my opinion it is obvious that a case of domain hijacking cannot be sustained in English
- additional costs for translations”
3.4 On February 22, 2008, the Center sent an email to the parties informing them that it had decided to:
(i) accept a Complaint filed in English;
(ii) accept a Response filed in either English or Romanian; and
(iii) appoint a panel familiar with both languages mentioned above, if available.
It also noted that the panel appointed in relation to these proceedings had discretion to determine the language of proceedings. The parties were informed that the panel might choose to write a decision in either language, or request translation of either party’s submissions.
3.5 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 22, 2008.
3.6 In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2008. The Response was filed with the Center on March 13, 2008. The language used by the Respondent in the Response was English.
3.7 No panelist who was familiar with both Romanian and English being available, the Center appointed Matthew S. Harris as the sole panelist in this matter on March 31, 2008. 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. Language of Proceedings
4.1 Given the procedural history of this matter the first thing the Panel has to consider is the language of these proceedings. Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
4.2 As was stated by the panel in Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”
4.3 Paragraph 11(b) of the Rules provides that a panel may require that documents that are not filed in the language of the proceedings be translated into that language. However, this Panel does not believe that is the sole extent of a panel’s powers so far as language is concerned. Subject always to the requirement that proceedings are conducted in accordance with the Policy and the Rules, a panel is generally granted wide discretionary powers regarding the conduct of those proceedings under paragraph 10 of the Rules. So, for example, insofar as a panel is concerned that the conduct of proceedings in a language other than that of the registration agreement and the native language of the registrant, may have had a detrimental impact on the ability of a respondent to express itself, then a panel may issue a procedural order seeking further clarification (see, for example, Mirela Zoita and Florin Popescu v. Westaco S.R.L., WIPO Case No. DRO2007-0008).
4.4 Further, the Panel can even conceive of circumstances where a panel considers it appropriate to order the translation by the complainant of a complaint into a language other than the language of the proceedings.
4.5 Therefore, the fact that a panel has these wide powers available to it under paragraph 10 to address any disadvantage that may be suffered by a respondent if proceedings are not in the language of the registration agreement, is also something that the panel can take into account when exercising its power to determine the language of proceedings under paragraph 11(a) of the Rules.
4.6 In this case, the Respondent initially objected to the proceedings being filed in English but then filed the Response in English, notwithstanding the fact that the Center gave him the option of doing so in Romanian. Further, whilst it is clear from the way in which the Respondent has expressed himself in the Response that English is not his first language, nevertheless his command of English seems to be good and he would not appear to have suffered any substantive detriment in having to conduct these proceedings in English. In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English1.
5. Factual Background
5.1 The Complainant is Henkel KGaA, a manufacturing company headquartered in Dusseldorf, Germany. The Complainant operates globally in three business sectors, namely laundry and homecare, cosmetics and toiletries and adhesives technology. Its adhesive division is present in “more than 125 countries” and the worldwide sales of that division in 2006 were €5.5 billion.
5.2 MOMENT is registered as a word trade mark in Romania in the name of the Complainant’s Russian subsidiary, OAO Henkel Era. The trade mark was registered with the Romanian State Office for Patents and Trade marks on April 5, 2005 for products in class 3 (whitening and other washing compounds, cleaning and polishing compounds, soaps, essential oils).
5.3 MOMENT is also registered as a Community Trade mark in the name of the Complainant as a word mark. This trade mark was registered on March 31, 2005 for products in class 1 (adhesives used in industry), 16 (adhesives for household, craft and office purposes), 17 (joint sealing compositions, sealing compounds for joints, sealing compounds with a silicon and acrylic base) and 19 (building materials (non-metallic)).
5.4 The Respondent is Mr. Augustin Sbinta, an individual living in Bucharest, Romania. The Respondent heads the Online Services Product Management Department of S.C. Romtelecom S.A, a provider of electronic communication services in Romania.
5.5 The Respondent registered the Domain Name on April 15, 2005. By July 2007, the Domain Name was used for a website that displayed text in Romanian but by December 2007, the Domain Name resolved to a website that took the form of a single page with links (or at least urls) for various Internet radio broadcasting streams (for example, http://radio.mesh-server.com:8050).
5.6 As at the date of this decision the content of the website operating from the Domain Name has changed again. Currently, it displays a Romanian language and Google powered search engine page.
6. Parties’ Contentions
6.1 The Complainant’s factual and legal contentions can be summarised as follows:
Identical or Confusingly Similar
6.2 The Complainant claims to be the world market leader in adhesives, sealants and surface treatments for consumers, craftsmen and industrial applications. The Complainant’s MOMENT products are said to be well-known to the Community and Romanian public. The products have been intensely promoted in Romania through “outdoor advertising” since 2003.
6.3 The Domain Name is said to be identical to the Complainant’s trade marks and its registration to lead members of the relevant public to believe that it has been registered by a branch or subsidiary of the Complainant. The reason given for this is that the Complainant has registered the Romanian ccTLD equivalent to its other trade marks as domain names (i.e. CERESIT - <ceresit.ro>, CERETHERM - <ceretherm.ro>, etc).
Rights or Legitimate Interests
6.4 The Complainant states that it has “exclusive rights over” its Romanian and Community Trade marks and has not authorized the registration of the Domain Name by the Respondent. Further, the registration of the Domain Name prevents the Complainant from registering the domain name in question and this, it is claimed, may lead to loss of clients and profit.
6.5 The Complainant’s trade marks are said to have been registered before the registration of the Domain Name.
6.6 The Complainant also maintains that the Respondent does not have a legitimate interest in respect of the Domain Name and is not using the Domain Name to promote goods or services under the MOMENT trade mark. There is said to be no connection between the Respondent and the Domain Name.
6.7 In registering the Domain Name, it is claimed that the Respondent intended to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s MOMENT trade mark.
6.8 Although the Domain Name was registered in 2005, the Complainant states that the Respondent has only begun operating a website from the Domain Name a few months ago, for “blog testing activities”. Only two articles have been published on the blog and there is said to be no “conceptual link” between the Domain Name and this content.
6.9 The Complainant also refers to the fact that more recently the website operating from the Domain Name changed so as to display external links (i.e. the broadcast stream links described at paragraph 5.5 of this decision). The display of such links is said by the Complainant to be “a technique commonly used by cybersquatters to mark that a domain name is for sale”.
6.10 The Complainant also mentions under this heading that the Respondent, on being contacted by the Complainant’s subsidiary in Romania, refused to transfer the Domain Name to the Complainant in return for the payment of registration costs.
Registered and Used in Bad Faith
6.11 The Complainant claims that the Respondent “most likely registered the Domain Name with knowledge of the Complainant’s previous registration of the Complainant’s trade mark and products”.
6.12 Therefore, according to the Complainant, the registration of the Domain Name was “most likely done in order to benefit from the Complainant’s trade mark in order to attract customers to the Respondent website which falls within the scope of Paragraph 4(b) of the Policy”.
6.13 The Complainant also relies upon the fact that no website has been active from the Domain Name for long periods of time in support of its contentions of bad faith.
6.14 The Respondent’s factual and legal contentions can be summarised as follows:
Identical or Confusingly Similar
6.15 The Respondent accepts that there is similarity between the Domain Name and the Complainant’s trade marks. However, he disputes the Complainant’s assertions as to the notoriety of the MOMENT brand within the EU in general, and Romania in particular.
6.16 Although both trade marks were in effect registered shortly before the registration of the Domain Name, the Respondent claims that neither registration had been made public until some time after the registration of the Domain Name (in the case of the Romanian trade mark, over a year later).
6.17 Further, the Respondent contends that the Complainant does not provide convincing evidence to demonstrate that the MOMENT products were well known by the EU or Romanian public on the date of the registration of the Domain Name, nor does it show that the products were intensely promoted in Romania through outside advertising since 2003.
6.18 Further the Respondent maintains that the Complainant’s Romanian advertising was in fact very limited. In the opinion of the Respondent, this was because the Complainant was reluctant to invest in promotion until it had received confirmation that its trade mark rights were protected.
Rights or Legitimate Interests
6.19 The Respondent refutes that he is a cybersquatter, and claims to have only registered two domain names, both for “personal projects” and both using generic names (i.e. <moment.ro> and <non-stop.ro>). Both are intended to combine the top-level domain “as an integral part of the website’s title”.
6.20 The Respondent claims to have registered the Domain Name because it is a useful stem for other personal websites, for example <un.moment.ro> (translated as ‘one.moment.ro’) and <acest.moment.ro> (translated as ‘this.moment.ro’). The word ‘moment’ is said to be used in its natural sense, not as a brand or mark. Further, the Respondent contends that <moment.ro> is a good domain name for email addresses, given that “@moment” can be represented verbally as “at moment”.
6.21 The Respondent denies that the Domain Name has been inactive. Although he accepts that there has not been continuous website use, he maintains that the Domain Name has been used for other purposes. In particular, he maintains it has been used:
(a) as an email server for himself, his family and friends. In support of that contention the Respondent exhibits a copy of an email sent to his wife in September 2006 at an email address that incorporates the Domain Name;
(b) for his family servers, “2.moment.ro” and “3.moment.ro”, operating surveillance cameras and similar devices; and
(c) as a root for sub-domains for his family and friends for various purposes ranging from a “ftp” storage server, a calendar (at http://calendar.moment.ro) and “collaborative tools for our documents” (at http://docs.moment.ro).
6.22 In the circumstances the Respondent maintains that he is engaged in legitimate non-commercial and fair use of the Domain Name.
Registered and Used in Bad Faith
6.23 The Respondent first refers to the fact that it is clear from the terms of the Policy that the requirements of registration in bad faith and use in bad faith are cumulative. The Complainant is therefore obliged to prove both these elements.
6.24 So far as registration is concerned, the Respondent maintains that the reason why he registered the Domain Name was not because of any similarity to the MOMENT trade marks but because the word ‘moment’ is a basic word in most European languages. He claims that on the date that he registered the Domain Name, he did not know of the existence of the MOMENT trade marks or the corresponding MOMENT products.
6.25 So far as use in bad faith is concerned, the Respondent maintains that the Complainant’s claim here is based on the assertion that the Domain Name has not been used. For the reasons already set out, the Respondent denies that there has been no use in this case.
6.26 Further the Respondent refers to paragraph 3.2 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” This states that:
“Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trade mark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.”
The Respondent claims that none of the activities described as examples identified in this paragraph apply in this case.
6.27 The Respondent also denies that the links to media streams of online radio stations that he placed at one time on his website provide any evidence of bad faith. According to the Respondent, these were not clickable links but instead “bookmarks”, which he placed on the website for the benefit of the Respondent’s family and friends.
Reverse Domain Name Hijacking
6.28 The Respondent maintains that this is a case where the Panel should reach a finding of reverse domain name hijacking. He relies in this respect on the fact that when he was contacted by the Complainant he made it clear that he was using it. Further, he states that in good faith he suggested to the Complainant that he register the domain name <moment.com.ro>, which was still available.
6.29 In this respect the Respondent also repeats his allegation that the Domain Name was registered prior to the publication of the trade marks relied upon by the Complainant.
6.30 With these facts in mind, the Respondent contends that it must have been clear to the Complainant that the Respondent was not a cybersquatter who had registered or was using the Domain Name in bad faith. The Complainant nevertheless filed the Complaint.
6.31 The Respondent therefore requests that the Panel make a finding that the Complaint was brought in bad faith and that this constitutes an abuse of the administrative proceedings.
7. Discussion and Findings
7.1 Paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and the principles of law that the Panel deems applicable.
7.2 It is incumbent on the Complainant to make out its case in all respects under the rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trade mark or 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.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
7.3 The Respondent concedes in his Response that the Domain Name is similar to a trade mark in which the Complainant has rights. He was quite right to do so. The Complainant either owns (or controls through a subsidiary) Romanian and Community Trade mark registrations for the word MOMENT. The Domain Name consists of the word ‘moment’ with the top level domain. In this case the top level domain can be ignored for the purposes of paragraph 4(a)(i) of the Policy. The Panel therefore has no difficulty in finding that the Domain Name is identical to trade marks of the Complainant.
7.4 The Respondent contends that the Domain Name was registered in April 2005 and so far as the Complainant’s Community Trade mark is concerned that would not have been effective as against the Respondent until 2007, when Romania became part of the EU.
7.5 In the opinion of the Panel, this does not matter. First, it is not necessary for a complainant to show trade marks rights in the jurisdiction in which the respondent resides. Rights in a trade mark in any jurisdiction are sufficient. Second, provided that a complainant has rights at the time of its complaint, it does not matter that it did not have them at the time that the relevant domain name was registered (see paragraph 1.4 of the “WIPO Overview of Panel Views on Selected UDRP Questions”). Of course, where a complainant has rights and when he had them may be relevant to the question of whether the respondent is aware of the complainant’s interest in the name or mark at the time that the domain name was registered and that in turn may impact on a finding of bad faith. However, for the purposes of paragraph 4(a)(i) of the Policy this is not relevant.
7.6 Therefore, the Panel finds that the Domain Name is identical to trade marks in which the Complainant has rights and the Complainant has therefore made out paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.7 Paragraph 4(c) of the Policy sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you 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 trade mark or service mark at issue.”
These are not an exhaustive enumeration of rights or legitimate interests. They are examples only.
7.8 In this case, the Respondent seems to be alleging that paragraph 4(c)(iii) applies. In essence he maintains that his personal and family use of the Domain Name which comprises an ordinary Romanian word amounts to “a legitimate noncommercial or fair use”.
7.9 However, this is one of those cases where a separate analysis of whether the Respondent has a right or legitimate interests in the Domain Name does not really add a great deal. On the Respondent’s own case the use of the Domain Name has been predominately personal in nature. If and insofar as the Respondent initially registered the Domain Name with the intent to take advantage of the reputation that the Complainant has developed in the “moment” name, then subsequent personal use of the type claimed could not provide the Respondent with a right or legitimate interest for the purposes of the Policy. Accordingly, the key question in this case is why the Respondent registered the Domain Name. This question is addressed by the Panel in the context of the assessment of whether the Domain Name was “registered and used in bad faith” below.
C. Registered and Used in Bad Faith
7.10 The Complainant in this case alleged that the Domain name was “most likely” registered “in order to benefit from the Complainant’s trade mark in order to attract customers to the Respondent website”. This seems to be a reference to paragraph 4(b)(iv) of the Policy. There is also an allegation of the domain name being for sale, which appears to be a reference to paragraph 4(b)(i) of the Policy. However, whether or not this is the case, it is clear that the Complainant contends that in registering the Domain Name the Respondent has in some way sought to unfairly take advantage of the reputation that the Complainant claims to have developed in the MOMENT mark.
7.11 To succeed in this respect the Complainant therefore needs to show that the Respondent was aware of the Complainant’s use of and reputation in the word “moment” at the time of registration.
7.12 In his Response the Respondent goes on at some length to describe why it is that he was not and could not have been aware of the Complainant’s trade mark registrations. There are references, for example, to when exactly the registrations relied upon were made public and in the case of the Community Trade mark, when it is that this mark had effect in Romania. However, this somewhat misses the point. What is important for the purposes of the Policy is not when a particular trade mark application or registration became public or had effect in a particular territory. It is whether at the time the domain name was registered the registrant knew the relevant name embodied in that domain name had become associated (or was reasonably expected in future to become associated) with the complainant’s business, goods or services. There may be cases where the exact date of publication of a trade mark may be relevant to that analysis. But this would depend upon whether as a matter of fact one could reasonably have expected the respondent to have actually checked the relevant trade mark registry2.
7.13 Nevertheless, on the crucial question of what the Respondent actually knew about the Complainant’s use of the MOMENT mark at the time of registration of the Domain Name, the Respondent’s position is clear and emphatic. He states that “on the date of the [D]omain [N]ame registration, I had no clue about the existence of some products called ‘Moment’“. If this is correct, the Domain Name cannot have been registered in bad faith and the Complainant’s case inevitably fails.
7.14 On careful consideration of all the material put before it, the Panel concludes that the Complainant has failed to disprove the Respondent’s assertions in this respect. The reasons for this are as follows.
7.15 First, the Respondent contends that the word “moment” is an ordinary Romanian word. It is not a contrived or invented word that is exclusively referable to the Complainant. The Complainant does not appear to deny this. In the circumstances, there is nothing inherent in the Domain Name itself that suggests that the Respondent must have known of its trade mark use by the Complainant.
7.16 Second, it is far from clear as to the extent of the reputation that existed in relation to the “moment” name at the time of registration. The Complainant contends that the mark was well known and the Respondent denies this. What evidence then exists on the question of reputation? Whilst the Complainant identifies the extent of its total sales worldwide in “adhesive, sealants and surface treatments” it does not disclose the extent of those sales under the MOMENT mark either generally or in Romania in particular. Products under that name are said to have been “intensively promoted in Romania through outdoor advertising since 2003” but no evidence of the amount of advertising investment is provided. The Complainant does exhibit copies of a number of advertisements but as far as the Panel can tell these seem to be predominantly advertisements in trade catalogues and the like in which the MOMENT mark is far from prominent. It is not possible from the evidence presented to the Panel to reach the conclusion on the balance of probabilities that the Respondent as an ordinary member of the Romanian public would have been aware of the MOMENT mark at the time of registration. There is also no suggestion that the Respondent is in any way involved in or connected to the adhesive sector from which such knowledge might otherwise be inferred.
7.17 Third, at no time after the time of registration has the Domain Name been used in connection with adhesive products. Insofar as it has been used at all, it seems to have been used for various non-commercial purposes. In the circumstances, it is not possible to infer from subsequent use the Respondent’s knowledge of the MOMENT mark at the time of registration.
7.18 Fourth, there is no evidence that the Respondent has generally engaged in registering domain names that correspond to trade marks and from which it might be inferred that it was with the Complainant’s MOMENT mark in mind that the Domain Name was registered. The only other domain name registration to which the Complainant refers is <non-stop.ro>. The words “non-stop” are not alleged by the Complainant to have any particular trade mark significance. Whether they are ordinary Romanian words the Panel does not know, but they are certainly an ordinary and common combination of words in English.
7.19 Lastly, there is the Respondent’s own explanation as to why he registered the Domain Name. At times this is a little difficult to follow but at its heart the Respondent seems to be alleging that he chose the Domain Name because it can be readily combined with other words to make attractive addresses for personal websites and has an intelligible second meaning when used in the context of an email address. So far as the alleged email addresses use is concerned, the example he gives is “@moment.ro” corresponding to “at moment”. As a matter of English these are not a combination of words that exactly trips off the tongue. The phrase “at the moment” is somewhat more natural. Also, there is no real explanation as to why an email that could be understood as incorporating the words “at moment” might be an inherently attractive one to use. Nevertheless, the explanation given is not of itself so fanciful and implausible that it calls into question the truthfulness of the Respondent’s assertion as to knowledge at the time of registration.
7.20 The other factors that the Complainant relies upon to found a claim of bad faith registration are also somewhat unconvincing.
7.21 For example, the Complainant states that posting external links on the website (as it contends that the Respondent has done, although the Respondent claims that these are not ‘clickable’) is a technique often used by cybersquatters to mark that a domain name is for sale. Sometimes it is possible to infer that a domain name is for sale from links on a website, sometimes it is not. In fact, these days the posting of numerous links to the commercial websites of third parties is more likely to indicate an intention to benefit from click through revenue than an intention to sell the domain name. However, in each case what is to be inferred depends upon the nature of the website and the nature of the links. In this case the links relied upon (if they are links at all) are to Internet radio broadcasts. It is simply not possible to infer from the particular links in this case that the Respondent registered the Domain Name with an intention to sell the Domain Name to the Complainant or its competitors.
7.22 Then there is the reference by the Complainant to the non-use of the Domain Name. It has certainly long been established that the fact that domain name is not used to resolve to an active website or for email addresses or the like does not prevent a finding of bad faith use for the purposes of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Further, there may be many cases where non-use may positively support a complainant’s claims of bad faith registration. A claim by a respondent that it has registered a domain name for a certain purpose may lack credibility if it transpires that the domain name has not been used in that fashion and no further explanation for that non-use is provided. However, each case will depend on its facts. In this case, the evidence suggests that the Domain Name has been used to at least some degree and that use is not inconsistent with the explanation given by the Respondent in the Response as to why the Domain Name was registered.
7.23 In short, the Complainant’s allegations of bad faith registration and use fail and the Complainant has therefore failed to make out the third requirement of paragraph 4(a) of the Policy.
Reverse Domain Name Hijacking
7.24 Rule 15(e) provides that the Panel shall declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding if it was brought as an attempt at Reverse Domain Name Hijacking (defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”) or was brought primarily to harass the domain name holder.
7.25 The Panel accepts that there are aspects of the Complainant’s case that appear to be not much more than assertions unsupported by argument or evidence. One example is the Complainant’s suggestion that the posting of external links on a website indicates that the registrant of a domain name may be a cybersquatter and that the domain name is likely to be for sale.
7.26 Nevertheless, a finding of reverse domain name hijacking requires more than that. As the Respondent himself contends, what is necessary is that the Complainant knew or should have known at the time it filled the Complaint that it could not prove one of the essential elements required by the Policy. The Panel does not believe that the evidence before the Panel supports that finding.
7.27 Key in this particular case is the knowledge that the Complainant ought reasonably to have had of the Respondent’s motives. The Respondent refers in this respect to conversations and correspondence that took place between him and the Complainant back in July 2007 before the commencement of proceedings. However, what little evidence there is before the Panel regarding such discussions does the Respondent no favours. First, the Respondent maintains that he suggested that the Complainant should instead register the domain name <moment.com.ro>, which is said to be more suitable for “business, firms, products and commercial services”. It is difficult to understand why the availability of alternative domains has any sensible bearing on the question of whether the Respondent’s own registration was abusive. Second, the Respondent seems to claim that he told the Complainant that the Domain Name was registered prior to the publication of the two trade marks owned by the Complainant. However, once again for the reasons given earlier on in this decision this is not really the issue. Further, on the question of the Respondent’s motivations for registration, there is little to suggest that the Respondent was particularly forthcoming. According to the Respondent, in an email dated July 6, 2007 he stated “As I told you on the phone, I wish to develop my own project on this domain and I don’t want to sell it”. But what that “project” is or was is not explained.
7.28 In short, what little material the Panel has seen suggests that the Complainant’s discussions with the Respondent seem to have elicited little more than irrelevant and unsolicited advice and no proper explanation for registration. In the circumstances, it is perhaps understandable that the Complainant thought the worst and decided to commence proceedings.
7.29 Perhaps this characterisation of events is unfair to the Respondent and is based upon an incomplete explanation of the discussions that took place in or around July 2007. However, in the same way as a complainant bears the burden of proof when it comes to abusive registration, it is a respondent that bears the burden of proof when it comes to the question of reverse domain name hijacking. The Respondent has failed to carry that burden in this case. The allegation of reverse domain name hijacking fails.
For all the foregoing reasons, the Complaint is denied but the Respondent’s claims of reverse domain name hijacking are rejected.
Matthew S. Harris
Dated: April 14, 2008
1 After the forwarding of a draft of this decision to the Center, the Complainant forwarded a supplemental submission on April 16, 2008 and the Respondent filled a submission in response on April 18, 2008. Given that these were filled out of time (and after the date of decision in this matter), neither document has been considered by the Panel in coming to its conclusions in this case.
2 It should be noted in this respect that (at least so far is this Panel is concerned) there is usually no obligation on a respondent to conduct such a search and that in the absence of such a search a respondent will not be bound by any doctrine of “constructive notice”. For a fuller examination of this issue and some of the relevant cases see the decision of this Panel in ServiceMaster Brands LLC v. Riel Roussopoulos, WIPO Case No. D2007-0346. See also this Panel’s decision in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, in which the local law doctrine that historically provided the theoretical justification for findings of constructive notice was expressly rejected.