Complainant is LaFrance Corp. of Concordville, Pennsylvania, United States of America, represented internally.
Respondent is David Zhang of Henderson, Nevada, United States of America.
The disputed domain name <lafrance.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2009. On March 31, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 31, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on March 31, 2009. The Center verified that the Complaint as amended satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2009, and the Response was filed on that date.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 8, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
According to its website at “www.lafrancecorp.com” Complainant is a “World Leader in High Quality Nameplates for over 60 Years.” Complainant was founded in 1946 and has continuously thereafter operated its business using the fanciful word “Lafrance” in its name. Complainant does not hold any registered trademarks incorporating the word “Lafrance.”
Respondent provides engineering consulting services, market research and project management, including Internet advertising for business. Respondent registered the disputed domain name after acquiring it in an Internet auction on March 15, 2009 with a winning bid of $3,088 USD. Third in the bidding was an employee of Complainant. Immediately after acquiring the disputed domain name Respondent began discussions with a third party to develop a website at the disputed domain name in connection with LinkedIn Group, a prominent American social and business networking site. Respondent's website is called “French Connections;” it includes news articles, forums, chat groups, and similar Internet-related opportunities, all related in some matter to France or French culture. Participation requires registration, which is free. At the Panel's examination of this website there were no advertising, no hyperlinks to commercial sites, and no mention of Complainant or Complainant's industry. It appears to be an active website and operating in the manner described above.
Complainant's contentions follow. The quotations in paragraphs 2 and 3 of this subsection A constitute Complainant's entire allegations under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
1. Complainant has common law rights in the word LaFrance by reason of having continuously operated under that name, and sold goods and services in commerce using that name, for more than sixty years. The disputed domain name is identical except for the generic top level domain, .com.
2. “[Respondent], the current owner of <LaFrance.com> is listed as an ‘Internet Real Estate' company. To our knowledge, this real estate company does not utilize the LaFrance name in any manner. No evidence of the use of LaFrance by [Respondent], or its business activities has been identified.”
3. “As stated on their website, corg.com, the intent of [Respondent] is to resell domain names.”
Respondent contends as follows:
1. Complainant has not shown any right to a trade or service mark; it has simply used its “trade name” to commence this proceeding. Trade names are inadequate to invoke the Policy. Even if Complainant had established trademark rights, “LaFrance” is a geographical term and a generic word for the country of France, as in the French language “La” is used merely to show the proper gender of the noun. Geographical terms and generic words may not be the basis for trademark rights under the Policy. Neither Complainant nor anyone else has an exclusive right to the term LaFrance, and in fact it is used by more than 100 companies in the United States of America alone. Complainant's products have nothing to do with the nation of France, and its trademark rights depend to a great extent upon its graphic logo, so there is no similarity between the Complainant's mark and the disputed domain name.
2. Immediately after acquiring the disputed domain name Respondent began to develop its French Connections site for use at that Internet address. Respondent supports this contention with copies of email communications with third parties regarding such development that predate commencement of this proceeding. Respondent carries on many businesses in addition to real estate, all of them legitimate.
3. At the time it registered the disputed domain name Respondent had no knowledge of Complainant or its marks. The content on the website established at the disputed domain name makes no reference to Complainant and has no links to products related to those sold by Complainant, but rather is limited strictly to the legitimate purposes for which the site was established. In these circumstances Complainant has failed to establish either use or registration of the disputed domain name in bad faith.
4. Complainant commenced this action shortly after being outbid in the public auction for the disputed domain name as its “Plan B” to acquire the disputed domain name. Complainant filed an abbreviated, summary complaint immediately after Respondent began to develop the French Connections site hoping to defeat a possible defense under paragraph 4(c)(i) of the Policy. This conduct justifies a finding of reverse domain name hijacking.
Although not strictly necessary for resolution of this proceeding given the Panel's findings under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, the Panel chooses to address this Policy element because of the erroneous arguments advanced by Respondent.
In the United States of America trademark rights accrue through use not registration. What American lawyers refer to as “common law trademark rights” are plainly sufficient to invoke the Policy, even if the word or words used to identify goods and services are descriptive, geographic, or even not capable of registration on the Principal Register of the United States Patent and Trademark Office. See, e.g., Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber's Mackinac Island Florist, WIPO Case No. D2001-0653; WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 1.7, consensus view. To the extent a “trade name” is a name under which goods and services have been offered for sale, it is adequate for purposes of paragraph 4(a)(i). As Complainant has shown continuous use of its name for sale of goods since 1946, a fact that Respondent perforce acknowledges, the first element of paragraph 4(a)(i) has been proven. As the disputed domain name is identical except for the addition of the top-level domain, paragraph 4(a)(i) has been satisfied.
The Complaint's cursory allegations quoted above fail to establish either of these two Policy elements, and Complainant offers no evidence to supplement its charges. That alone is reason for denial of the Complaint. Furthermore Respondent's development of its website, whether it be strictly informational or later becomes commercial, comes squarely within the safe harbor in paragraph 4(c)(i) of the Policy:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.
Respondent first received notice of this dispute on March 27, 2009, the date it received a copy of the original Complaint in this proceeding by electronic mail from Complainant. Respondent's evidence shows earlier “demonstrable preparations” to develop its French Connections site, and the subsequent content of that site is both consistent with Respondent's stated purpose and entirely legitimate. There is no evidence and indeed no allegation of specific conduct that Respondent's site makes any use of any goodwill attaching to Complainant's trademark.
In order to show bad faith in registration, Complainant must establish by a preponderance of the evidence that Respondent actually knew of Complainant, its marks and selected the disputed domain name to target Complainant by taking advantage of the goodwill attached to the mark. See WIPO Overview, paragraph 3.4; Align Technology, Inc v. Web Reg/Rarenames/Aligntechnology.Com, WIPO Case No. D2008-0103. There is nothing in the record in this proceeding to support a finding or inference that either of these requirements has been met. Complainant has no registered trademark and bases its claims upon a term that Respondent has demonstrated is fairly common in commerce. Complainant's mark is not associated exclusively or even primarily with Complainant, and there is no reason apparent on the record of this proceeding that Respondent should have known of Complainant or its marks. Occasionally bad faith in registration may be inferred from subsequent use that betrays knowledge of the mark, but not in this proceeding. None of the content on Respondent's website bears any relation to Complainant or its business or the business of Complainant's competitors.
The Rules define reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name” (paragraph 1); see also paragraph 15(e), which empowers the Panel to include a finding “that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Complainant's contentions under paragraphs 4(a)(ii) and 4(a)(iii) are woefully inadequate. The Complaint provides no evidence of cybersquatting, nor of Respondent's having selected the disputed domain name to take advantage of Complainant's mark. The Complaint includes no evidence from which the Panel could find two of the three Policy elements, a fact which in the undersigned's view should suffice for RDNH, see Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033. (Dissenting opinion).
Respondent's argument that Complainant initiated this proceeding as “Plan B” following its losing bid in the auction is supported by the proximity of that auction to the filing of the Complaint. If that were the motivation for beginning this proceeding there would indeed be grounds for a finding of bad faith and abuse of the administrative proceeding by Complainant, especially in light of the lack of any showing that Respondent was targeting Complainant.
Had Complainant been represented by counsel the Panel would not have hesitated to make an RDNH finding, see Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598. Nevertheless, in his discretion the Panel declines to enter a finding of RDNH, but does find, as provided in paragraph 15(e) of the Rules, that the Complaint “was brought primarily to harass the domain-name holder.”
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: May 15, 2009